CTNF 18/481,299 CTNF 95663 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. DETAILED ACTION Election/Restriction 08-08 AIA Restriction to one of the following inventions is required under 35 U.S.C. 121: I. Claim s 1-10 , drawn to a bead dispenser , classified in B01J 4/001 . II. Claim s 11-20 , drawn to a method for dispensing beads from a test tube , classified in B01J 2219/00468 . 08-13 AIA The inventions are independent or distinct, each from the other because: 08-17 AIA Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the process of Invention II can be practiced with a bead dispenser that is unitary with the test tube, rather than mounted as in the apparatus of Invention I. Further, the apparatus of Invention I can be used to dispense liquids, unlike in the method of Invention II, where beads are dispensed . 08-21 Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply: a. The inventions have acquired a separate status in the art in view of their different classification; and/or b. The inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or c. The inventions require a different field of search (for example, searching different class/subclasses or electronic resources, or employing different search strategies or search queries); and/or d. The prior art applicable to one invention would not likely be applicable to another invention; and/or e. The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112, first paragraph. Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention . The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention. 08-23 AIA During a telephone conversation with James Finn on 3/17/2026 a provisional election was made without traverse to prosecute the invention of Group I , claim s 1-10 . Affirmation of this election must be made by applicant in replying to this Office action. Claim s 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention. 08-23-02 AIA Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i). 08-21-04 AIA The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined. In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01. Claim Status Claims 1-20 are pending, with claims 1-10 being examined, and claims 11-20 deemed withdrawn. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 8 is 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. Regarding claim 8, the claim recites that the second curve is from 80 degrees to 90 degrees. However, it is unclear what the second curve is 80 degrees to 90 degrees relative to. Is it 80-90 degrees relative to the second linear path? The first linear path? The test tube? Or something else? Further clarification is needed. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (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. 07-15 AIA Claim s 1-3 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Reinhold et al. (US Pub. No. 2016/0145031; hereinafter Reinhold) . Regarding claim 1, Reinhold discloses a bead dispenser ([0002], [0016], the dispenser is capable of singular dispensing of beads) . The said bead dispenser is adapted to mount onto a test tube containing beads of a uniform diameter and dispense a number of said beads from said test tube upon a single upright to inverted and rotated movement of said test tube containing said beads and said bead dispenser, wherein the number of said beads dispensed from each of a plurality of single upright to inverted and rotated movement cycles is the same ([0016], [0080]-[0081], see Fig. 1 at dispensing device 100 and storage container 700. The dispensing device 100 is capable of being mounted onto a test tube containing beads of uniform diameter. Further, as the dispensing device singularly dispenses solid components, it is capable of having the number of beads dispensed from each of a plurality of single upright to inverted and rotated movement cycles being the same) . Note: The instant Claims contain a large amount of functional language (ex: “adapted to mount onto a test tube containing beads of a uniform diameter…”, “adapted to….dispense a number of said beads from said test tube upon a single upright to inverted and rotated movement of said test tube containing said beads and said bead dispenser …”, etc.). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims. Regarding claim 2, Reinhold discloses the bead dispenser of claim 1, wherein said bead dispenser comprises a cap portion adapted to mount over a top portion of said test tube (see Fig. 1 at dispensing device 700) . Regarding claim 3, Reinhold discloses the bead dispenser of claim 1, wherein said bead dispenser comprises a bead channel defining a bead entry opening and a bead exit opening and a lumen extending from said bead entry opening to said bead exit opening (see Fig. 1 at dispensing device 100. In order for the beads to travel from the container 700 and be dispensed out of the dispensing device 100, there must intrinsically be a bead channel having an entry opening and exit opening, with a lumen therebetween. See also [0131], which describes a channel for dispensing solid portions) . 07-15 AIA Claim s 1 and 3 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Haas (US Pat. No. 4,415,098) . Regarding claim 1, Haas discloses a bead dispenser (Col. 1 Lns. 4-6) . The bead dispenser is adapted to mount onto a test tube containing beads of a uniform diameter and dispense a number of said beads from said test tube upon a single upright to inverted and rotated movement of said test tube containing said beads and said bead dispenser, wherein the number of said beads dispensed from each of a plurality of single upright to inverted and rotated movement cycles is the same (Col. 1 Lns. 40-57, Col. 2 Lns. 56-65, see Fig. 1 at bottle 14 mounted to bead dispenser 10. The dispensing device 10 is capable of being mounted onto a test tube containing beads of uniform diameter. Further, as the dispensing device dispenses beads one at a time, it is capable of having the number of beads dispensed from each of a plurality of single upright to inverted and rotated movement cycles being the same) . Regarding claim 3, Haas discloses the bead dispenser of claim 1, wherein said bead dispenser comprises a bead channel defining a bead entry opening and a bead exit opening and a lumen extending from said bead entry opening to said bead exit opening (see Figs. 1-3 at dispensing device 10 having a channel with an inlet, outlet, and lumen therebetween) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Reinhold . Regarding claim 10, Reinhold discloses the bead dispenser of claim 1, wherein said uniform diameter of said beads is between 3.8 mm and 4.2 mm (the beads are not positively recited. Further, the dispenser of Reinhold is capable of dispensing beads having the claimed diameter) . Further, even if Reinhold is not considered to be a bead dispenser for beads having a uniform diameter between 3.8 mm and 4.2 mm, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a bead dispenser for beads having a uniform diameter between 3.8 mm and 4.2 mm, since where only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and MPEP 2144.04(IV)(A). The motivation would have been to be able to dispense beads of a suitable size for a desired application . 07-21-aia AIA Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Haas . Regarding claim 10, Haas discloses the bead dispenser of claim 1, wherein said uniform diameter of said beads is between 3.8 mm and 4.2 mm (the beads are not positively recited. Further, the dispenser of Haas is capable of dispensing beads having the claimed diameter) . Further, even if Haas is not considered to be a bead dispenser for beads having a uniform diameter between 3.8 mm and 4.2 mm, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to provide a bead dispenser for beads having a uniform diameter between 3.8 mm and 4.2 mm, since where only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955) and MPEP 2144.04(IV)(A). The motivation would have been to be able to dispense beads of a suitable size for a desired application . Allowable Subject Matter 12-151-08 AIA 07-43 12-51-08 Claim s 4-7 and 9 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. 07-43-02 AIA Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: Reinhold, Haas, Difiglio et al. (US Pat. No. 4,101,284; hereinafter Difiglio), Ezevich (US Pat. No. 4,909,416), and Zahirovic (US Pub. No. 2021/0146326) teach a bead dispenser similar to that claimed. However, Reinhold, Haas, Difiglio, Ezevich, and Zahirovic do not teach, either alone or in combination with the prior art, that the bead channel extends away from said test tube in a first linear path, curves, and extends in a second linear path. Specifically, although Reinhold and Haas, which are considered to be the closest prior art, teach a bead channel (see the rejections of Claim 3 in the Claim Rejections-35 USC 102 section for Reinhold and Haas, respectively) , Reinhold and Haas do not teach, either alone or in combination with the prior art, that the bead channel extends away from said test tube in a first linear path, curves, and extends in a second linear path. Further, although Zahirovic teaches a curved channel for a dispenser (Zahirovic; [0032], see Fig. 7 at sock attachment 11) , Zahirovic does not teach that the bead channel extends away from said test tube in a first linear path, curves, and extends in a second linear path. The claimed configuration of the bead channel as in claim 4 of the instant claim set would be advantageous for allowing a bead dispenser to dispense a set number of beads (i.e. more than one bead) during each of a plurality of single upright to inverted and rotated movement cycles, as best demonstrated in Fig. 3 of the instant Drawings. Claims 5-9 would be allowable for depending on claim 4, an allowable claim . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to John McGuirk whose telephone number is (571)272-1949. The examiner can normally be reached M-F 8am-530pm. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JOHN MCGUIRK/Examiner, Art Unit 1798 Application/Control Number: 18/481,299 Page 2 Art Unit: 1798 Application/Control Number: 18/481,299 Page 3 Art Unit: 1798 Application/Control Number: 18/481,299 Page 4 Art Unit: 1798 Application/Control Number: 18/481,299 Page 5 Art Unit: 1798 Application/Control Number: 18/481,299 Page 6 Art Unit: 1798 Application/Control Number: 18/481,299 Page 7 Art Unit: 1798 Application/Control Number: 18/481,299 Page 8 Art Unit: 1798 Application/Control Number: 18/481,299 Page 10 Art Unit: 1798 Application/Control Number: 18/481,299 Page 11 Art Unit: 1798 Application/Control Number: 18/481,299 Page 12 Art Unit: 1798 Application/Control Number: 18/481,299 Page 13 Art Unit: 1798