Reissue
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 15 September 2025 has been entered.
Status of Claims
Amended patent claims 1-19 and new claims 20-23, 25, and 27-39 are pending.
Improper Amendment
The amendment filed 15 September 2025 proposes amendments to the claims that do not comply with 37 CFR 1.173(c), which sets forth that “whenever there is an amendment to the claims pursuant to paragraph (b) of this section, there must also be supplied, on pages separate from the pages containing the changes, the status (i.e., pending or canceled), as of the date of the amendment, of all patent claims and of all added claims, and an explanation of the support in the disclosure of the patent for the changes made to the claims.” No support for any amendment has been provided.
Recapture
Claims 20, 21, 25, and 27-39 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based.
See Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
In Clement, 131 F.3d at 1468-70, 45 USPQ2d at 1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for recapture analysis. In North American Container, 415 F.3d at 1349, 75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step process:
(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
(3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule.
Analysis – Claim 20
As to STEP 1, new claim 20 does not include the following limitation found in original patent claim 1:
A coupling element…the coupling element has a latching element which can engage with a counter-latching element provided on the reaction vessel unit or on the carrier unit, wherein at least the latching element or the counter-latching element is elastically mounted
New claim 20 does not include the following limitation found in original patent claim 3:
…the sliding rod is hollow and is formed open at the rear end facing away from the rotor chamber and a threaded rod is provided coaxially to the sliding rod, and the threaded rod is in meshing engagement with a thread connected to the sliding rod, so that a translational movement of the sliding rod is carried out by a rotatory movement of the threaded rod.
New claim 20 does not include the following limitation found in original patent claim 4:
A linear drive…wherein the linear drive converts a rotating movement into a linear movement by a positive-locking or meshing engagement.
A claim in the reissue application which includes subject matter not covered by the patent claims enlarges the scope of the patent claims. For example, if any amended or newly added claim in the reissue contains within its scope any conceivable product or process which would not have infringed the patent, then that reissue claim would be broader than the patent claims. Tillotson, Ltd. v. Walbro Corp., 831 F.2d 1033, 1037 n.2, 4 USPQ2d 1450, 1453 n.2 (Fed. Cir. 1987); In re Ruth, 278 F.2d 729, 730, 126 USPQ 155, 156 (CCPA 1960); In re Rogoff, 261 F.2d 601, 603, 120 USPQ 185, 186 (CCPA 1958). See MPEP 1412.03.
With respect to STEP 2, during prosecution of the application that became U.S. Patent No. 11,117,142, the examiner indicated in the office action of 15 September 2020 that the subject matter of limitations (a)-(c), i.e. dependent claims 3, 6, and 16, was free of the art. In the Response of 15 December 2020, patent owner amended claims 3 and 16 to be in independent form. In the Final office action of 19 March 2021, the examiner again indicated dependent claim 6 as free of the art while claims 3 and 16, now independent, were indicated as allowed. An After Final amendment was filed 6 June 2021 amending dependent claim 6 so as to be independent. Thus, all of limitations (a)-(c) were added to make the independent claims patentable over the art.
Any limitation presented, argued or stated to make the claims patentable over the art “generates” the surrender of claimed subject matter that omits that limitation in its entirety, i.e. surrender of any claim whose scope does not contain the limitation.
Limitations (a)-(c) are therefore surrender generating limitations.
As to STEP 3, new claim 20 has not been materially narrowed in any aspect related to the surrendered subject matter. The amendment of 15 September 2025 adds the following limitations to claim 20 related to the sliding rod:
the rigid sliding rod is guided through an opening in a wall of the housing, and
the rigid sliding rod has a smooth surface configured to engage with the sealing element to seal the rigid sliding rod against the wall of the housing.
Notably, the amendment relates to the sliding rod but not to the surrender generating limitation, which requires:
“the sliding rod is hollow and is formed open at the rear end facing away from the rotor chamber and a threaded rod is provided coaxially to the sliding rod, and the threaded rod is in meshing engagement with a thread connected to the sliding rod, so that a translational movement of the sliding rod is carried out by a rotatory movement of the threaded rod.”
Any narrowing must relate to the surrendered subject matter, not merely to other features of the sliding rod. Nevertheless, a smooth sliding rod is not materially narrowing because it was known in the prior art as disclosed by Lattanzi. See In re Mostafazedeh, 643 F.3d 1361; 98 USPQ2d 1644.
Claims 21 and 27-39 are also rejected as being dependent upon claim 20 and thus, require all the limitations thereof.
Claim 25 is rejected under 35 U.S.C. 251 because, although it recites surrendered subject matter, it is not materially narrowing because the claimed linear drive was known in the prior art as taught by DE10 2012 213 220 to Schlegel. See In re Mostafazedeh, 643 F.3d 1361; 98 USPQ2d 1644.
Claim 22 is excluded from the recapture rejection as reciting surrendered subject matter. Claim 23 is likewise excluded as depending from claim 22 and thus, requires all the limitations thereof.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 20-23, 25, 27-39 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 20 has been amended to include the following limitation:
“the rigid sliding rod has a smooth surface configured to engage with the sealing element” (emphasis added).
The ‘142 patent under reissue discloses the following with respect to the rod:
The sliding rod preferably has a smooth surface. A smooth surface allows easy and thorough cleaning of the sliding rod. With a smooth surface, there is little risk of unwanted impurities accumulating permanently. In addition, a smooth surface can be sealed particularly reliably against areas outside the rotor chamber by means of a sealing device. This can at least partially prevent deposits from being carried out of the rotor chamber on the sliding rod. Col.5, lines 11-18.
During the movement of the sliding rod, the sealing element ensures, for example, that any liquid that may be on the sliding rod is removed from the sliding rod and is therefore not carried away by the rotor chamber into the area of the drive. A particularly advantageous design is one in which the sliding rod has a smooth surface, as this allows the sealing element to enclose the sliding rod flush. This allows effective wiping of materials on the sliding bar. Col.6, lines 5-12.
Thus, the ‘142 patent does not disclose that the surface of the rod is “configured to engage with the sealing element” only that it can be sealed with the sealing element. Use of the phrase “configured to” implies that something more than mere smoothness of the rod is present in order to achieve engagement with the sealing element, which is not disclosed by the ‘142 patent.
Claims 21-23, 26, and 27-39 are likewise rejected as depending from claim 20 and requiring all the limitations thereof.
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 1270078 to Lattanzi (hereinafter Lattanzi) in view of DE 102012213220 to Schlegel (hereinafter Schlegel) and US 3,605,829 to Genese et al. (hereinafter Genese).
Lattanzi teaches a centrifuge with a rotor 11 and a rotor chamber 10 in which the rotor is arranged and rotatably mounted, the rotor having a receiving region for receiving a reaction vessel unit 30, and the centrifuge is provided with a loading and unloading device comprising a sliding rod 15’ for positioning a reaction vessel unit 30 in or removing a reaction vessel unit from the rotor 11, the sliding rod 15’ being movably arranged to be pulled out between an unloading position (shown in Fig.2) in which it extends through the rotor in the rotor chamber and a loading position (shown in Fig.1) in which it is pulled at least out of the region of the rotor chamber, and a linear drive 15 for moving the sliding bar between the unloading position and the loading position (para [0015]). A detection device (potentiometer) provides position feedback of the sliding rod to a microprocessor which then “issues a command to energise the electromagnet of the rotating arm,” permitting removal of the bucket cover and handling of the test tubes by the robotic arm of the automated analysis system. See paras [0028-0030].
As to the particular linear drive, Lattanzi discloses that the drive may be a “screw driven by an electric motor through a reducing gear train (not shown)” in para [0015] but does not disclose that the sliding rod is hollow. Furthermore, Lattanzi is silent to a pipetting unit for filling a reaction vessel.
Schlegel teaches a linear drive including a hollow sliding rod 16 that is open at both ends 68,70 and a threaded rod 8 is provided coaxially to the sliding rod 16, and the
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threaded rod is in meshing engagement with a thread 10,102 connected to the sliding rod, so that a translational movement of the sliding rod 16 is carried out by a rotary movement of the threaded rod 8. See English translation, paras [0028, 0029, 0034]; Figs. 1 and 2.
As Lattanzi teaches the drive is a screw driven by an electric motor, and Schlegel discloses the end portion 20 of threaded rod 8 “can be connected to an electric motor to drive the linear motion device 1” (para [0029]), it would have been obvious to employ the linear drive of Schlegel as that used by Lattanzi as being capable of achieving the linear motion described by Lattanzi.
Lattanzi discloses that the centrifuge may be integrated into an automated biological analysis system (paras [0002-0003]) but does not disclose a pipetting unit for filling the reaction vessel.
Genese teaches an apparatus for automatically performing a series of operations on a blood sample contained within a reaction vessel/vial 38. Multiple vials may be placed within a carrier 36. The carriers are held by trunnions 30 attached to the rotor 10 of a centrifuge. During use of the centrifuge, the rotor is rotated such that each vial “will automatically receive approximately three ml. of saline as it passes under the discharge nozzle 44.” See col.12, lines 22-41. Additionally, a reagent may be added to each vial via nozzle 49. See col.12, lines 65-74 and col.8, lines 40-72. Thus, Genese discloses the known use of a pipetting unit in an automatic biological analyzer. It would have been obvious to one of ordinary skill in the art to add the nozzles/pipetting units of Genese to the centrifuge of Lattanzi, in order to permit the addition of reagents/cleaning agents that would be needed when integrating into an automated analyzer.
Allowable Subject Matter
Claims 1, 2, and 4-19 are allowed.
The following is an examiner’s statement of reasons for allowance: With respect to claims 1 and 2, Lattanzi and Mann both teach a set of magnets (coupling element and counter-latching element) to couple the sliding rod and the reaction vessel unit. Neither teach or suggest the latching element or counter-latching element is elastically mounted.
With respect to claims 4-19, claim 4 has now been amended to require the sliding rod operates in a horizontal direction. Lattanzi operates in only a vertical direction and there is no teaching or motivation to change the orientation of the entire Lattanzi device such that a horizontal sliding rod would be operable. Furthermore, Mann discloses a loading mechanism 34 that is bent in half (shown in Fig. 13) or may be wound on a reel (page 15, lines 10-12), both configurations designed to minimize installation space. See also, page 5, lines 39-41. Thus, there is no motivation to replace the loading mechanism of Mann with the rack and pinion drive of Williams, which cannot be wound or bent to reduce installation space in the manner of Mann.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant's arguments filed 15 September 2025 with respect to claim 3 have been fully considered but they are moot in view of the new ground of rejection necessitated by Applicant’s amendment.
Applicant’s arguments, see pages 12-14 of the Response, with respect to the rejection of claim 4 have been fully considered and are persuasive. The rejection of claims 4-19 has been withdrawn.
Applicant’s arguments, see page 14 of the Response, with respect to the rejection of claim 20 under 35 USC §103 have been fully considered and are persuasive. The rejection of claims 20-25 and 27-39 under 35 USC §103 has been withdrawn.
Applicant's arguments, see pages 15-16 of the Response, with respect to the Recapture rejection have been fully considered but they are not persuasive. The amendment added to claim 20 relates to the sliding rod but not to the surrender generating limitation specifically, which requires:
“the sliding rod is hollow and is formed open at the rear end facing away from the rotor chamber and a threaded rod is provided coaxially to the sliding rod, and the threaded rod is in meshing engagement with a thread connected to the sliding rod, so that a translational movement of the sliding rod is carried out by a rotatory movement of the threaded rod.”
Any narrowing must relate to the surrendered subject matter, not merely to other features of the sliding rod. Nevertheless, a smooth sliding rod is not materially narrowing because it was known in the prior art as disclosed by Lattanzi. See In re Mostafazedeh, 643 F.3d 1361; 98 USPQ2d 1644.
Conclusion
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,117,142 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Any inquiry concerning this communication or earlier communications from the
examiner should be directed to ELIZABETH MCKANE whose telephone number is
(571) 272-1275. The examiner can normally be reached on Mon-Thurs; 6:30 am -
4:30 pm.
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, Patricia Engle can be reached on 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH L MCKANE/Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991