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 without traverse of Group I in the reply filed on 09/02/2026 is acknowledged.
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.
Claims 1, 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 26, 28 and 31-33 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 26, 28 and 31-33 are not clear with respect to what applicant is claiming. The claims do not clearly set forth the metes and bounds of the patent protection desired.
Claim 1 is ambiguous because it fails to clearly define the structural elements being claimed. While the claim recites “a holder [...]; an extractor [...]; and an imager,” it subsequently introduces functional language—such as “arranged in use to support [...],” “moveable in use [...] when [...],” and “arranged in use to capture [...] when [...]”—without positively reciting the underlying structural elements. Consequently, it is unclear whether the limitations following the functional language are part of the claimed invention, rendering the metes and bounds of the claim vague and indefinite. Claims 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 26, 28 and 31-33, which depend on the above elements, are similarly unclear and/or are rejected based on their claim dependency.
Claim 5 recites the limitation "the interior of the container" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 is unclear reciting “[...] based on the relative locations of the said positions, at least portions of the path over which the collector is travelling from one of said positions to another of said positions are a self-avoiding walk, and the collector being arranged in use to attach to a vessel located at the selection position and to deposit the vessel at the fourth position and.” Specifically, the term “self-avoiding walk” is indefinite as its meaning is unclear in the context of the claim, and the phrase concludes with an open-ended, dangling conjunction (“and.”).
Claim 15 recites the limitation "the matter" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 17 recites the limitation "the matter" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the gripper" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 26 recites the limitation "the teeth" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 31 recites the limitation "the second gripper" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation "the gripper" in L2. There is insufficient antecedent basis for this limitation in the claim.
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, 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 31-33 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Silbert et al. (US 2013/0065797 A1).
Regarding claim 1, Silbert teaches:
1. An apparatus (Fig. 1 & Abstract+) for extracting a biological sample from a sample container, the apparatus comprising:
a holder (e.g., 107) arranged in use to support a sample container (e.g., 101, 102, 210, 211; see Figs. 1-3 for example);
an extractor (e.g., robot arm 112/pipettor 406) moveable in use between a first position disengaged from the container when the container is supported by the holder (e.g., claim 26 a) and a second position engaged with the container when the container is supported by the holder (e.g., claim 26 b), the extractor being arranged in use to obtain matter from the container when in the second position (see ¶ 0015, 0019, claims 26a-b, 30 & Figs. 10, 14-17 for example); and
an imager (e.g., camera ¶ 0010; image collection device ¶ 0020; image capture device ¶ 0023) arranged in use to capture an image of the extractor at the first position when the extractor is moved from the second position to the first position and to identify, based on analysis of the captured image, when sample is present outside the container (see ¶ 0101, claims 26 c-d, 28-29, 35 for example).
With regard to limitations in claims 1, 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 28 32 and 33 (e.g., arranged in use to support a sample container; [...] moveable in use between a first position disengaged from the container when the container is supported by the holder and a second position engaged with the container when the container is supported by the holder, the extractor being arranged in use to obtain matter from the container when in the second position; and [...] arranged in use to capture an image of the extractor at the first position when the extractor is moved from the second position to the first position and to identify, based on analysis of the captured image, when sample is present outside the container, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2, 5, 6, 9, 13, 15, 17, 18, 20, 25, 31-33, Silbert teaches:
2. The apparatus according to claim 1, wherein the analysis of the captured image includes object detection, and the object detection includes contrast detection (e.g., barcode images from a camera ¶ 0010, 0015-0016, 0101-102+).
5. The apparatus according to claim 1, wherein, when in the second position, the extractor is arranged in use to obtain matter from the interior of the container when the container is supported by the holder (see ¶ 0015, claim 26 a-b for example).
6. The apparatus according to claim 5, wherein the extractor (e.g., robot arm 112/pipettor 406) includes a collector (e.g., pipette tip ¶ 0017), the collector capable of being moveable in use between the first position and second position, the first position being a position outside the container when the container is supported by the holder and the second position being a position inside the container when the container is supported by the holder (¶ 0015), and wherein the matter obtained from the container is at least a portion of a sample (e.g., 212), and the collector is moveable between the first position and a third position (¶ 0015).
9. The apparatus according to claim 6, wherein the collector further comprises a removably attachable vessel (e.g., pipette tip ¶ 0017), the collector being arranged in use to pass liquid into the vessel to obtain the at least a portion of the sample when in the second position (¶ 0009, 0102).
13. The apparatus according to claim 9, wherein the collector is capable of being moveable along a path between the first, third, fourth and selection positions, and, based on the relative locations of the said positions (see ¶ 0065).
15. The apparatus according to claim 1, wherein, when in the second position, the extractor is arranged in use to obtain a cap (e.g., 212) from the container (see ¶ 0040, 0081, 0090 for example).
17. The apparatus according to claim 1, wherein the extractor includes a first gripper (e.g., chuck 205, tube gripper 405) and the matter obtained from the container is a cap (e.g., 212) of the container, the first position being a position in which there is a separation between the first gripper and the container when the container is supported by the holder and the second position being a position in which the first gripper is clamped to the cap of the container when the container is supported by the holder (see ¶ 0178 & Figs. 5-6 for example).
18. The apparatus according to claim 17, wherein the first gripper being able to be clamped to the cap by being arranged in use to grip the cap of the container, and wherein the holder is arranged in use to maintain the orientation of the container when supported by the holder and the first gripper being rotatable in use, the first gripper thereby being arranged in use to remove the cap, the matter obtained in use from the container thereby being the cap (see ¶ 0178 & Figs. 5-6 for example), and the imager is arranged in use to capture an image of the container and cap (see ¶ 0015-0016 for example).
20. The apparatus according to claim 18, wherein the first gripper is arranged in use to replace the cap on the container (see ¶ 0178 & Figs. 5-6 for example).
25. The apparatus according to claim 1, wherein the holder is arranged in use to support a plurality of containers, supporting only a single container at any one time (see ¶ 0098-0100 for example), and the apparatus further comprising a second gripper (e.g., one of 205; see ¶ 0178 & Figs. 5-6 for example).
31. The apparatus according to 17, wherein the first gripper and the second gripper are the same gripper (see Figs. 5-6 for example).
32. The apparatus according to 17, wherein a portion of the gripper is arranged in use to provide contact between the gripper and a container held by the gripper has a plurality of inwardly oriented projections the projections forming a pitch circle (see ¶ 0178 & Figs. 5-6 for example).
33. The apparatus according to claim 1, further comprising a further imager arranged in use, based on orientation and positioning of the further imager, to capture a further image of a deck of the apparatus, and to identify, based on analysis of the further captured image, whether consumables on the deck are located in an expected position (¶ 0020, 0101-0103 for example).
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.
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.
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.
Claim(s) 26 & 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Silbert et al. (US 2013/0065797 A1), and further in view of Schacher (US 2012/0321516 A1).
Regarding claims 26 & 28, Silbert teaches:
wherein the gripper has a pair of jaws, at least one of the jaws being moveable towards and away the other jaw, the pair of jaws having at least teeth with each jaw having at least one of the at least teeth, the teeth being positioned so as to form a pitch circle at a first separation of the jaws, and the teeth each have a taper on a radially outer side of each of the teeth tapering at a tip of the each of the teeth tapering the tip radially inwardly (see the tapered teeth of 205 in Figs. 5-6 for example).
wherein the teeth of each jaw each have a first portion and a second portion (see Figs. 5-6 for example)
However, Silbert does not explicitly teach: 26. The apparatus according to claim 25, wherein the gripper has a pair of jaws, at least one of the jaws being moveable towards and away the other jaw, the pair of jaws having at least three teeth with each jaw having at least one of the at least three teeth, the teeth being positioned so as to form a pitch circle at a first separation of the jaws, and the teeth each have a taper on a radially outer side of each of the teeth tapering at a tip of the each of the teeth tapering the tip radially inwardly. 28. The apparatus according to claim 26, wherein the teeth of each jaw each have a first portion and a second portion, a radially inner side of each first portion being radially inward of the respective second portion, each first portion being located at a tip of the respective jaw and being arranged in use to contact the container when the second gripper is in use.
Schacher teaches: wherein a gripper has a pair of jaws (e.g., 28), at least one of the jaws being moveable towards and away the other jaw, the pair of jaws having at least three teeth with each jaw having at least one of the at least three teeth (e.g., 35), the teeth being positioned so as to form a pitch circle at a first separation of the jaws, and the teeth each have a taper on a radially outer side of each of the teeth tapering at a tip of the each of the teeth tapering the tip radially inwardly (see Figs. 2c-2d for example); wherein the teeth of each jaw each have a first portion and a second portion, a radially inner side of each first portion being radially inward of the respective second portion, each first portion being located at a tip of the respective jaw and being arranged in use to contact a container when the second gripper is in use (see Figs. 2c-2d for example).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the gripper of Silbert with the teachings of Schacher to provide as friction surface for an even better grip, i.e. for preventing sliding or misplacement during decapping, recapping or holding of the cap (Schacher ¶ 0084).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, LUAN VAN can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1795
DEAN KWAK
Primary Examiner
Art Unit 1795
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