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 .
DETAILED ACTION
This Office Action is in response to the Applicant’s communication filed on 23 August 2023. In virtue of this communication, claims 1-12 are currently presented in the instant application. In a preliminary amendment on 23 August 2023, claims 1, 3-9, and 11-12 have been amended.
Information Disclosure Statement(s)
The information disclosure statement(s) (IDS) submitted on 23 August 2023 is/are in compliance with the provisions of 37 CFR 1.97 and 1.98. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 (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.
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.
(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.
Claim(s) 1-4, 9 and 12 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Millet et al. (Publication No.: US 2010/032486 A1, herein known as D1).
With respect to claim 1, D1 discloses an air displacement pipette comprising:
two oppositely positioned ends, a first end and a second end, which second end comprises an opening for fluid and being configured to fit with a tip (see Fig. 1, first end is considered where the display 118 is located, second end where sampling tip 30 is located; [0027]; [0040] discloses how the tip is “fitted onto tip holding nizzle 6”);
a housing (body case 104);
a pipetting activator (user controls 120; [0051]-[0053] describes how the controls are used to determine the volume to be sampled and the initiation of sampling);
a tip ejector activator connected to a tip ejector (tip ejector 108; Fig. 1 and [0027]; the user actuated bit would be the activator and associated mechanical parts the ejector);
a shaft comprising an air displacing chamber (see Fig. 3; lower pipette body 4 is the shaft and the lower aspiration chamber 20 is the air displacing chamber; [0040]); and
an air displacing body configured to move in said air displacing chamber; wherein said air displacing body has a forward position, in which it displaces air from said air displacing chamber, and a retracted position (piston 12; [0043]),
wherein characterized in that said air displacement pipette further comprises:
a suction conduit configured for fluid connection adapted for being fluidly connected to a suction unit (fluid communication implementation means 40 with tubes A, B, C, and D; Fig. 3 and [0044]); and
a valve configured to control adapted for controlling the fluid flow through said suction conduit (valves 42 and 44; Fig. 3 and [0044]);
wherein said suction conduit is either:
a) fluidly connected to said second end via a through-going opening entering the shaft; or b) fluidly connected to said second end via an adaptor configured for releasable mounting being releasably mounted to the second end, said adaptor further configured to fit with a tip (tip holding nozzle 6 with channel 28, with the tip fitting over the nozzle 6; [0040]).
With respect to claim 2, D1 further discloses a pipette wherein said air displacing body comprises a through-going opening in fluid connection to said suction conduit (see Fig. 6; in an alternate embodiment of the piston 12 it is formed with seals 17 which forms a fluid pocket opening in communication with the suction conduits).
With respect to claim 3, D1 further discloses a pipette wherein said valve is either positioned inside said housing or positioned outside said housing (inherent to be one or the other; Fig. 3 and the description of the valves 42 and 44 in [0047]-[0048] suggest both valves are interior to the overall housing as the inlets 3 of each of valve 42 and 44 lead to the exterior wall of the body case 104).
With respect to claim 4, D1 further discloses a pipette wherein said suction conduit is fluidly connected to said air displacement chamber (see Fig. 3, the conduits A, B, C, and D of fluid communication 40 have inlets 1 and 2 of valves 42 and 44 that enter in different portions of the air displacement chamber 20).
With respect to claim 9, D1 further discloses a pipette comprising two operation modes, a pipetting mode and an aspiration mode;
in said pipetting mode, the valve is closed, and the following steps are performed:
1) activating the pipetting activator displacing a set amount of air from the air displacing chamber; 2) releasing or re-activating to pipetting activator to draw an amount of liquid corresponding to the set amount of air into the disposable tip (process of controlling the valves 42 and 44 as described in [0054]-[0056]); and
3) emptying the set amount of liquid from the disposable tip ([0057]),
in said aspiration mode, the valve is open, and gas or liquid is aspirated from the disposable tip to the suction conduit or both gas and liquid are aspirated from the disposable tip to the suction conduit ([0054]).
With respect to claim 12, D1 further disclose a pipette wherein liquid to be removed from a container by suction is first drawn into the disposable tip from the container, optionally then the content in the disposable tip or in the container is checked for content, and then the liquid held in the disposable tip is aspirated from the disposable tip to the suction tip to suction conduit (the overall process as described in steps [0054]-[0058]).
Claim Rejections - 35 USC § 103
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.
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) 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 as applied to claim 1 above, and further in view of Chantalat (Publication No.: WO 2006038130 A2, herein D2, cited in the background section of the specification and a machine translation is provided with this Office Action).
With respect to claim 5, D1 further discloses a pipette wherein said valve comprises or is constituted of a flexible tubing and that said valve is closed by kinking of said flexible tubing (the valve of D1 is a movable solenoid cutting off the flow to one inlet.
Applicant admits in [0018] that D2 “discloses a valve comprising a bending sleeve functioning as a valve by making a kink in a flexible tube, which kink closes off the flow in the flexible tube.”
It would have been obvious to one of ordinary skill in the art at the time the inventio was filed to modify the pipette of D1 to modify the valves of the pipette of D1 from a slidable solenoid alternating between two states for the three individual channels (of unspecified design) to introduce the bending sleeves of D2 to individually kink each channel if the channels are designed out of flexible tubes as known in the art for fluid communication (including as taught by D2). D2 mentions advantages of this form of valve in that the clamps can be made of entirely inexpensive plastic materials, and can precisely control the release of highly pressurized fluids using minimal force ([0010]). In the combination, an advantage would be that each inlet can be individually controlled, which would prevent issues if the solenoid of the valve of D1 became misaligned, and as D2 describes in [0014] that a “surge” of fluid is prevented when the valve is opened which would prevent damage to the piston when the valves are opened.
With respect to claim 6, D1 further discloses a pipette wherein the suction conduit is fixed in position relative to the housing at or near the first end of the housing (near is a relative term of degree, and there is no suggestion in the specification that the conduits 40 are capable of being moved).
D1 does not explicitly disclose a pipette wherein a tube section constitutes a flexible part and fluid connection between the fixed position of the suction tube conduit and the air displacing body, wherein the flexibility of the flexible part is obtained by shaping the tube section as a coil (no specifics are given as to the design of the conduits).
D2 discloses using flexible tubing that are kinked by the valve in order to open and close the conduit and the system being used in the related field of art (see above rejection of claim 6 and applicant’s admission of prior art).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the pipette of D1 by utilizing flexible tubes to transfer the fluids as taught by D2 as a known conduit for fluids that have advantages of being flexible and therefore less at risk of breaking from vibrations/impacts of the device.
While neither D1 nor D2 explicitly disclose the shaping of the tube section as a coil, it has been held that changes in shape and size is an obvious variant over the prior art of record. In this case, depending on the desired length of the tubular bodies within the housing of the combination of D1 and D2 for desired amounts of fluid it would be obvious to one of ordinary skill in the art to use a coiled arrangement surrounding the central shafts, or alternatively on each side of the shaft to obtain the given lengths of each tube without significantly increasing the overall size of the body housing compared to using a straight elongated tube.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1 as applied to claim 1 above, and further in view of Petrek (Publication No.: US 2018/0099270 A1, herein known as D3).
With respect to claim 8, D1 does not disclose explicitly disclose a pipette wherein both said pipetting activator and said tip ejector activator are positioned at said first end, thereby allowing for thumb activation (only the pipetting activator is at the first end, and only with a broad interpretation of “end” can the ejector activator 108 be considered at the first end, and the specific mechanics of the ejector is not described if it can be activated by a thumb or not).
However, D1 teaches using the buttons to activate functions of the device ([0032]).
D3 teaches using the activation of a button to cause the activation of the tip ejector 20 ([0029]).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the pipette of D1 by causing the activation of the tip ejection function by a button press as taught by D2, and thus would be obvious to be incorporated into the series of buttons of D1 that are programmed/designed to allow a user to control the operating characteristics of the pipette so that all the user’s actions and presses on the pipette are centralized for user convenience.
Allowable Subject Matter
Claim 7 and 10-11 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.
While D1 utilizes a tip ejector activator and it is known in the art to use hand/finger/thumb actuated means for activating the activator, which can involve actuated means such as described in Reed, cited below, the use of the same valve for the suction conduit also for the ejection of the pipette tip is considered to be novel and non-obvious (Examiner’s emphasis) for claim 8, and the activation of the ejector activator to control the pipetting modes and suction force (claims 10 and 11) are also considered to be novel and non-obvious for similar reasoning.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
McNaul et al. (Publication No.: US 2021/0121869 A1)
Voyeux et al. (Publication No.: US 2014/0298925 A1)
Reed (Patent No.: US 3,918,308 A)
Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA HANCOCK whose telephone number is (571)270-7547. The examiner can normally be reached on 10AM-6PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached on (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/D.H/Examiner, Art Unit 2852
9/27/2025
/STEPHANIE E BLOSS/Supervisory Primary Examiner, Art Unit 2852