DETAILED CORRESPONDENCE
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 invention and/or species, and corresponding claims (1 and 3) is acknowledged. The election has been made without traverse. Non-elected claims are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Interpretation
Limitations regarding the inherent properties, intended uses, and/or functions of the claimed mold are given patentable weight only to the extent that such limitations are structure. The determination of patentability of an object is based upon the structure of the object itself (see footnote 1).
Claim1 requires an object that can be used as a mold; that is made of any elastomeric material; and that has the claimed shape.
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“including but not limited to” means comprising
“the mold can be configured in different number, size, depth, and arrangement” means that the mold can be manufactured to have different shapes (not that a single mold has rearrangeable parts)
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.
Claim(s) 1 and 3 is/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 pre-AIA the applicant regards as the invention.
In reference to claims 1 and 3, the phrase " typically" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. This is generally descriptive, however, legally indefinite language1. See MPEP § 2173.05(d).
PROPOSED SOLUTION: Remove “typically” from the claims.
In reference to claims 1 and 3, the phrase “the main chamber” is numerically inconsistent with “two main chambers” and “each main chamber”.
It is unclear if the phrase requires all of the main chambers to have opposite ends or only refers to one of the main chambers.
PROPOSED SOLUTION: Change “the main chamber” to --each main chamber –.
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 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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MCFX (NPL 2019 – this is a product manual for lab equipment2; PDF is attached to this office action).
In reference to claims 1 and 3, MCFX discloses a “silicone well plate” and illustrates the plate on Pg. 3 (copied below). This is the same as the claimed invention because there are at least two chambers, as claimed, and it is made of elastomer.
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Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thingverse (NPL 20123 - this is a 3D printing website; PDF printout of website is attached to this office action).
In reference to claims 1 and 3, Thingverse discloses making a “silicone well plates” and provides a photo of a silicone well plate, shown below. This is the same as the claimed invention because there are at least two chambers, as claimed, and it is made of elastomer.
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Conclusion
Any prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS R KRASNOW whose telephone number is (571)270-1154. The examiner can normally be reached M-R: 8am-5pm.
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, Xiao Zhao can be reached on 571-270-5343. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS R KRASNOW/Examiner, Art Unit 1744
1 “claims are not technical descriptions of the disclosed inventions but are legal documents like the descriptions of lands by metes and bounds in a deed which define the area conveyed”
(In re Vamco Mach. & Tool, Inc., 752 F.2d 1564, 1577 n.5 (Fed. Cir. 1985))
2 https://www.cellscale.com/downloads2/MechanoCultureFXUserManual.pdf
3 https://www.thingiverse.com/thing:36293