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 .
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.
Claims 1, 3, 6, 10, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (US 10058859 B2) in view of Kinney et al. (US 12434234 B2) (Referenced in 892).
Regarding claim 1, Gehrig et al. teaches a suction tip configured to suck a biological subject (Col. 1, 5th paragraph), the suction tip comprising a base tip (see annotated FIG. 6 below) including a distal end opening (FIG. 6, element 7 – coupling point), a sub-tip (FIG. 6, element 2 pipette tip) including a suction port (FIG. 6, element 3 - deformable expulsion end) configured to suck the biological subject, and a guide passage having one end connected to the suction port and an other end that receives the distal end portion of the base tip (FIG. 3), the base tip and the sub-tip are coupled and integrated by externally fitting the other end of the guide passage to the distal end portion (FIG. 3, element 2 and 7 are coupled), the integration configuring one suction path in which the tubular passage and the guide passage communicates with each other (FIG. 3), and the suction port has a size smaller in cross-sectional area than a size of the distal end opening in cross-sectional area (FIG. 6 – elements 3 and 7).
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Gehrig et al. fails to teach the following limitations.
The suction tip is configured to attach to a head which includes a mechanism configured to generate a suction force
The base tip further comprises a proximal end portion into which an end portion of the head is insertable
Regarding limitation I, Kinney et al. teaches a suction tip (elements 1 (pipette tip extension) and 12 (pipette tip)) configured to attach to a head which includes a mechanism configured to generate a suction force (element 22 – pipette 22 is part of pipetting head 27 of the liquid handling work station 25 (controls dispensation/aspiration), which is in turn is under the control of the controller – Col. 33 – 3rd paragraph) (see annotated FIG. 7 below). Kinney et al. teaches that using the head allows positioning of the assembly and control over dispensation and aspiration steps (Col 33 – 3rd paragraph).
It would have been obvious to a person of ordinary skill in the art to use Kinney et al.’s teaching a head in Gehrig et al.’s suction device because the head would allow positioning and control over dispensation and aspiration steps for the pipette. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Kinney et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Gehrig et al. and Kinney et al. to obtain the invention as specified in claim 1.
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Regarding limitation II, Kinney et al. teaches a base tip 12 (pipette tip) that further comprises a proximal end portion into which an end portion of the head is insertable (See annotated FIG. 7 above). Kinney et al. also teaches that the attachment of pipette tip 12 (base tip) with the head (elements 22 and 27), enables movement, positioning, and control of the pipette (Col 33 – 3rd paragraph).
It would have been obvious to a person of ordinary skill in the art to use Kinney et al.’s teaching a base tip featuring a proximal end portion in Gehrig et al.’s suction device because the proximal end portion in the base tip would allow attachment of the base tip to the head, enabling movement, positioning, and control of the pipette. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Kinney et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Gehrig et al. and Kinney et al. to obtain the invention as specified in claim 1.
Regarding claim 3, modified Gehrig et al. teaches the suction tip according to claim 1. Gehrig et al. teaches a state where the base tip and sub tip are coupled and integrated (See annotated FIG. 3 below), the distal end portion has outer peripheral surface in close contact with an inner peripheral surface of the other end of the guide passage (FIG. 3 – elements 2 and 7).
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Regarding claim 6, modified Gehrig et al. teaches the suction tip according to claim 1. Gehrig et al. also teaches a suction tip wherein the sub-tip includes a first stopper part (Figure 2, feature 2 pipette tip) configured to position the guide passage in an extending direction (Col 9, 10-12, “Fig. 3 shows the situation in the pipette tip take up position. The pipette tip 2 is hung in the supporting frame 16”). The annotated Figure 2 below shows a first stopper part present on the sub-tip.
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Regarding claim 10, modified Gehrig et al. teaches the suction tip according to claim 1. Gehrig et al. teaches a suction tip further comprising a plunger (FIG. 6, feature 8 displacement unit) that is slidably accommodated in the tubular passage of the base tip (Col 6, 19-21 “The pipette unit 1 has a displacement unit 8 fluidically connected to the coupling point 7 and the pipette tip 2 mounted thereon”), and generates a negative pressure at the suction port (Col 6, 23-27 “It is essential that the displacement unit 8 can generate in the coupled pipette tip 2 a negative pressure”).
Regarding claim 11, modified Gehrig et al. teaches the suction tip according to claim 1. Modified Gehrig et al. teaches a head to which the suction tip is attached (See FIG. 7, Kinney et al.) and which includes a mechanism configured to generate a suction force and discharge force at the suction port (element 22 – pipette 22 is part of pipetting head 27 of the liquid handling work station 25 (controls dispensation/aspiration), which is in turn is under the control of the controller – Col. 33 – 3rd paragraph, Kinney et al). Furthermore, Modified Gehrig et al. teaches a transfer mechanism configured to move the head horizontally and move the head up and down (Col. 33 – 3rd paragraph, Kinney et al).
Claims 2, 4, 5 are rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (already referenced) in view of Kinney et al. (already referenced) as applied in claim 1 above, and in further view of Mathus et al. (US 9333500 B2).
Regarding claim 2, modified Gehrig et al. teaches the suction tip according to claim 1. Specifically, Gehrig et al. teaches a suction tip with a base tip (Figure 6, feature 7 coupling point). Gehrig et al. also teaches that the suction port with a second distal end portion (Figure 6 element 3 resiliently deformable expulsion end) are generally round in shape (Col 3, 35-37). Gehrig et al. does not explicitly teach that the first distal end portion (“distal end” in annotated FIG. 6 above) of the base tip has a circular cross section. However, Mathus et al. teaches a base tip (element 12) with a lower section (element 232) with a circular cross-section (Figure 14, element 233 lowermost portion). Mathus et al. also teaches that cylindrical mounting shafts and cylindrical tip collars lessens mounting and ejection forces (Col. 2, 5-7).
It would have been obvious to a person of ordinary skill in the art to use the Mathus et al.’s teaching of cylindrical mounting shafts in modified Gehrig et al.’s device because cylindrical mounting shafts lessen mounting and ejection forces on the pipette tip. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Mathus et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Mathus et al. to obtain the invention as specified in claim 2.
Gehrig et al. teaches a suction port with first and second distal end portion. Gehrig et al. does not explicitly teach the second distal end portion has an outer diameter smaller than the first distal end portion. However, Mathus et al. teaches a pipette tip (element 14) with a second distal end portion (element 44) with a smaller diameter than the first distal end portion (element 42). Mathus et al. teaches that pipette tips are generally conical in shape (Col 1, Line 46), while the small opening allows the liquid sample to be received into and dispensed from the barrel of the pipette tip (Col 1, 51-53).
It would have been obvious to a person of ordinary skill in the art to use the Mathus et al.’s teaching of conical tips in modified Gehrig et al.’s because conical tips with small openings allows the liquid sample to be received into and dispensed from the barrel of the pipette tip. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Mathus et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Mathus et al. to obtain the invention as specified in claim 2.
Regarding claim 4, modified Gehrig et al. teaches the suction tip according to claim 3. Gehrig et al. teaches a distal end portion (feature 7) that has an outer peripheral surface, and the guide passage of the pipette tip (feature 2) has an inner peripheral surface. Gehrig et al. teaches that these two surfaces are in close contact (Figure 1, feature 2 and 7). Gehrig et al. does not explicitly teach that the outer peripheral surface is a tapered surface, whose outer diameter decreases towards the distal end opening. Gehrig et al. also does not teach that the inner peripheral surface is a tapered surface, whose inner diameter decreases towards the suction port. However, Mathus et al. teaches a mounting shaft (feature 12) with a sealing section (feature 32) whose outer peripheral surface tapers towards the distal end opening with a decreasing outer diameter. Mathus et al. teaches a sealing area (feature 39) whose inner peripheral surface tapers towards the suction port with a decreasing inner diameter. Mathus et al. also teaches that the fit between the mounting shaft and the disposable tip is achieved by pushing the tapered mounting shaft into the tapered pipette tip collar until it wedges into the tip (Col 1, 58-61).
It would have been obvious to a person of ordinary skill in the art to use the Mathus et al.’s teaching of tapered fits in modified Gehrig et al.’s device because tapering ensures a fit between the distal end portion and guide passage. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Mathus et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Mathus et al. to obtain the invention as specified in claim 4.
Regarding claim 5, modified Gehrig et al. teaches the suction tip according to claim 1. Gehrig et al. teaches a pipette tip (feature 2) with a leading surface continuously at the other end of the guide passage (Col 6, 14-15 “The pipette tip 2 is thus fitted onto the coupling point 7 formed by the pipette shaft”). Gehrig et al. does not explicitly teach that the leading surface is tapered. However, Mathus et al. teaches a leading tapered surface in pipette tip (feature 14) along the inside collar (feature 36). Mathus et al. teaches that disposable pipette tips have historically relied on tapered fits between the mounting shaft and the pipette tip collar to secure and seal the tips to the mounting shaft (Col 1, 54-59).
It would have been obvious to a person of ordinary skill in the art to use the Mathus et al. teaching of tapered fits in modified Gehrig et al.’s device because the tapered fit would secure and seal the base tip to the guide passage. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Mathus et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Mathus et al. to obtain the invention as specified in claim 5.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (already referenced) and Kinney et al. (already referenced) as applied to claim 6 above, and in further in view Ott et al. (US 12415180 B2).
Regarding claim 7, modified Gehrig et al. teaches the suction tip according to claim 6. Gehrig et al. does not teach the base tip includes a second stopper part. However, Ott et al. teaches a pipette tip (feature 14 – acting as the base tip) including a collar (feature 16). Ott et al. teaches that “the collar (16) prevents a deformation of the pipette tip 14 during attachment to the pipette 23 and provides a stabilizing effect” – specifically when attaching to the head (pipette 23) (Col 15, 19-22).
It would have been obvious to a person of ordinary skill in the art to use the Ott et al.’s teaching of a collar on the base tip in modified Gehrig et al.’s device because collars preventing deformation of the base tip and provide a stabilizing effect when attaching to the head. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Ott et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Ott et al. to obtain the invention as specified in claim 7.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (already referenced) in view of Kinney et al. (already referenced) as applied to claim 1, and in further view of Petrek (US-8524170-B2).
Regarding claim 8, modified Gehrig et al. teaches the suction tip according to claim 1. Gehrig et al. also teaches a sub-tip that comprises of resin in the resiliently deformable expulsion end (feature 3) (Col 3, 29-31 “typical materials for a resiliently deformable expulsion end of the pipette tip include polyimide, polyamide, or silicone). Gehrig et al. does not teach explicitly whether the base tip comprises of resin. However, Petrek teaches a mount segment (feature 412) may be molded from either polypropylene or another polymer (Col 8, 18-19). Petrek also teaches that thermoplastic elastomers that are softer than polypropylene or polyethylene may be used for the mount segment (feature 412), thereby reducing force required to mount of eject the sealing tip (feature 410) from the pipette (feature 110) (Col 8, 26-29).
It would have been obvious to a person of ordinary skill in the art to use the Petrek’s teaching of thermoplastic elastomers (resin) in modified Gehrig et al.’s device because resins reduce the force required for mounting and ejection. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Petrek. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Petrek to obtain the invention as specified in claim 8.
Gehrig et al. teaches an insertion fitting between the distal end portion of the base tip (feature 7) and the guide passage of the sub tip (feature 2). Gehrig et al. does not teach explicitly that the distal end portion of the base tip is inserted into the other end of the guide passage without interposing an adhesive. Petrek teaches an insertion fitting between the base tip and the guide passage of the sub tip (Col 11, 7-12 “As shown in FIG. 10 a relatively tight friction fit between an interior surface 920 of the liquid handling segment 914 and an exterior surface 922 of the mount segment 912 is sufficient to hold the parts together, to maintain an air-tight seal between the mount segment 912 and the liquid handling segment 914”). Petrek teaches that simple friction fits for disposable tips are known in the art, providing an air tight seal between the shaft and the tip (Col 1, 48-54).
It would have been obvious to a person of ordinary skill in the art to use the Petrek’s teaching of friction fits in modified Gehrig et al.’s device because friction fits maintain an airtight seal between base and sub tip. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Petrek. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Petrek to obtain the invention as specified in claim 8.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (already referenced) in view of Kinney et al. (already referenced), (Petrek (US 8524170) as applied in claim 8 above, and in further view of Mathus et al. (US 7662343 B2).
Modified Gehrig et al. teaches the device of claim 8. Gehrig et al. teaches a sub-tip that comprises of resin in the resiliently deformable expulsion end (feature 3) (Col 3, 29-31 “typical materials for a resiliently deformable expulsion end of the pipette tip include polyimide, polyamide, or silicone).
Gehrig et al. does not teach explicitly whether the base tip and sub-tip are made of resin of a same material. However, Mathus et al. teaches a device using a disposable pipette tip (feature 14) and pipette mounting shaft (feature 12); pipette tips (feature 14) manufactured in accordance with the invention will be typically made of molded plastic, normally polyethylene or polypropylene with or without various additives (Col 6, 60-63); the mounting shaft (feature 12) is preferably made from machined steel or machined or molded from chemically resistant plastic such as PEEK or polypropylene (Col 7, 52-54).
It would have been obvious to a person of ordinary skill in the art to use the Mathus et al.’s teaching of using resin like polypropylene in modified Gehrig et al.’s device, because resins (like polypropylene) offers chemically resistant properties. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Mathus et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Mathus et al. to obtain the invention as specified in claim 9.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Gehrig et al. (already referenced) in view of Kinney et al. (already referenced) as applied to claim 1, and in further view of Ito et al. (US 20170128932 A1) (already listed in IDS filed on 04/06/2026).
Regarding claim 12, modified Gehrig et al. teaches the biological subject transfer device according the claim 11. Gehrig et al. teaches the base-tip and sub-tip in an attached state. However, modified Gehrig et al. fails to teach a stock part configured to stock the base tip to which the sub-tip is attached, in a state where the tubular passage faces upwards. Ito et al. teaches a tip stock part (element 54) containing cylindrical tips (element 70). Ito et al. teaches that the stock part holds a large number of cylinder tips to be mounted on head 10 (para. [0095]). (“Specifically, the cylinder tip 70 is held in the holding box 541 in a state in which the cylinder tip 70 is easily mountable to the head 10 moving in the Z direction.” (para. [0096]).
It would have been obvious to a person of ordinary skill in the art to use Ito et al.’s teaching of a stock part in modified Gehrig et al.’s device because the tip stock part holds a large number of cylinder tips for easy mounting with the head. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Ito et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Gehrig et al. and Ito et al. to obtain the invention as specified in claim 12.
Regarding the controller, Ito et al. teaches a control unit (element 30) which controls movement of the head device 1 itself in the X direction, Y direction, and Z direction (para. [0074). Specifically, control unit (element 30) controls the lowering and raising operations – (“(Control 5) Control of moving the head unit 61 above the tip stock portion 54 and mounting the cylinder tip 70 to the head 10” (para. [0103]).
It would have been obvious to a person of ordinary skill in the art to use Ito et al.’s teaching of a controller in modified Gehrig et al.’s device because the controller would control raising and lowering operations, allowing the head to move above the tip stock portion and mount the tip. This method of improving Gehrig et al.’s device was within the ability of one of ordinary skill in the art based on the teachings of Ito et al. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of modified Gehrig et al. and Ito et al. to obtain the invention as specified in claim 12.
Response to Arguments
The claim amendments have overcome the previously presented rejections under 35 U.S.C 112(b), and the respective 35 U.S.C 112(b) rejections have been withdrawn.
The claim amendments have overcome the previously presented objections, and the respective claim objections have been withdrawn.
Applicant’s arguments, see (p. 6-8, Rejection Under 35 U.S.C. §§ 102 and 103), filed on 3/26/2026, with respect to the rejection of claim 1 under U.S.C. § 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground of rejection is made in view of Gehrig et al. (US 10058859 B2) and Kinney et al. (US 12434234 B2).
Applicant further argues that the rejection of claim 11 is improper because the reference of Gehrig describes element 18 as a “mount” for displacement unit 8, and is not properly considered a head as claimed (Page 8 of the response dated 3/26/2026). In response, the combination of the references of Gehrig et al. and Kinney et al. with respect to claim 1 meets the limitations of claim 11.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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//J.F.Y./ Examiner, Art Unit 1799
/William H. Beisner/Primary Examiner, Art Unit 1799
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