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 of Group I, claims 2-17 in the reply filed on 07/06/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 18-25 were cancelled in the response dated 07/06/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/20/2023, 04/12/2024, and 05/02/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Claim Objections
Claim 3 is objected to because of the following informalities:
In claim 3, change “the plurality of fluidic path” to “the plurality of fluidic pathways” to match the style of claim 2.
Appropriate correction is required.
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 2-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 12-18 of U.S. Patent No. 11,149,265. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 2, claim 1 of the reference patent recites a device comprising:
a plurality of chambers, each chamber of the plurality of chambers comprising a top opening, a bottom opening, and a seal;
a lid configured to:
seal the plurality of chambers by contacting the seal of each chamber of the plurality of chambers, and
upon pushing of the lid towards the plurality of chambers, simultaneously pressurize each chamber of the plurality of chambers at a respective chamber pressure; and
a rotating section comprising a solid phase column, wherein the rotating section is configured to rotate to form, in sequence, a fluidic pathway between the solid phase column, the bottom opening of each chamber of the plurality of chambers, and a receptacle of the plurality of receptacles, thereby allowing flow of a fluid from the each chamber through the solid phase column into a receptacle of the plurality of receptacles, the fluid pressurized by the respective chamber pressure (reads on wherein the rotating section is configured to rotate to form a sequence of a plurality of fluidic pathways between the solid phase column and the bottom opening of each chamber of the plurality of chambers, each fluidic pathway of the plurality of fluidic pathways pressurized by the respective chamber pressure).
Regarding claim 3, claim 1 of the reference patent recites a storage section comprising a plurality of receptacles, wherein a fluidic pathway is formed between each of the plurality of receptacles and a respective fluidic path of the plurality of fluidic paths (thus they operably align) thereby allowing flow of fluid from a respective chamber through the solid phase column and into the storage section.
Regarding claim 4, claim 18 of the reference patent recites wherein:
the respective chamber pressure of a first chamber of the plurality of chambers is independent from the respective chamber pressure of a second chamber of the plurality of chambers.
Regarding claim 5, claim 2 of the reference patent recites wherein:
at least one chamber of the plurality of chambers comprises a pierceable membrane configured to contain a fluid within the at least one chamber,
the lid comprises at least one piercer, and
the lid is further configured to, upon pushing of the lid towards the plurality of chambers, pierce, by the at least one piercer, through the pierceable membrane of the at least one chamber.
Regarding claim 6, claim 13 of the reference patent recites wherein:
at least one chamber of the plurality of chambers comprises a pressure-activated membrane configured to contain a fluid within the at least one chamber, and
the pressure-activated membrane is further configured to, upon pushing of the lid towards the plurality of chambers, burst, thereby releasing the fluid within the at least one chamber.
Regarding claim 7, claim 14 of the reference patent recites wherein the pressure-activated membrane has a failure point configured to burst upon pressurization.
Regarding claim 8, claim 15 of the reference patent recites wherein at least one chamber of the plurality of chambers comprises a pressure-activated valve configured to:
remain closed, thereby containing a fluid within the at least one chamber, and
upon pressurization, open, thereby allowing flowing through of the fluid.
Regarding claim 9, claim 3 of the reference patent recites wherein the plurality of chambers comprises: a first chamber to accept a sample, a second chamber containing a first wash buffer liquid, and a third chamber containing an elution buffer.
Regarding claim 10, claim 4 of the reference patent recites wherein the sample is a pre-lysed sample containing nucleic acids in a lysis buffer.
Regarding claim 11, claim 5 of the reference patent recites wherein the plurality of chambers further comprises a fourth chamber containing a second wash buffer liquid.
Regarding claim 12, claim 6 of the reference patent recites wherein the plurality of chambers further comprises a fifth chamber containing air.
Regarding claim 13, claim 7 of the reference patent recites wherein:
the plurality of chambers further comprises a sixth chamber containing a negative control fluid,
the rotating section further comprises an opening to form, upon rotation of the rotating section, a fluidic pathway between the sixth chamber and a negative control receptacle of the plurality of receptacles, and
the plurality of receptacles comprises an elute receptacle.
Regarding claim 14, claim 16 of the reference patent recites wherein the seal of the each chamber of the plurality of chambers is a rubber O-ring around an external surface of the each chamber of the plurality of chambers.
Regarding claim 15, claim 17 of the reference patent recites wherein the rotating section comprises a central opening configured to accept a motor shaft for motorized rotation of the rotating section.
Regarding claim 16, claim 12 of the reference patent recites wherein the second wash buffer liquid comprises an alcohol with a chain length greater than 5.
Regarding claim 17, claim 8 of the reference patent recites wherein:
the at least one chamber comprising the pierceable membrane comprises the second chamber, the third chamber, the fourth chamber, and the sixth chamber, and
the at least one piercer comprises a piercer for each of the second chamber, the third chamber, the fourth chamber, and the sixth chamber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOLLY KIPOUROS whose telephone number is (571)272-0658. The examiner can normally be reached M-F 8.30-5PM.
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/HOLLY KIPOUROS/Primary Examiner, Art Unit 1799
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