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 .
Claim Interpretation
In the patentability analysis of the instant apparatus claims 1-28, aspects or limitations examiner interprets as functional/process/intended use or not positively recited as part the claimed apparatus have been generally italicized whereas aspects interpreted as positively recited structural components are normally bolded. The bold font and italics are shown when the structure and function are initially introduced though not necessarily repeated, particularly in dependent claims. The examiner applies this formatting for both the examiner and applicant’s convenience. However, absent the referenced typestyles, the patentability analysis will still be clear regarding which limitations the examiner interprets as structural versus functional/process/intended use language and/or elements not positively recited in the apparatus. Also note that it has been held that recitations in which an element is "adapted to/for", “configured to/for”, “positionable”, “moveable/immovable”, etc., only requires the ability to so perform (i.e., functional/process/intended use). The functional/process/intended use and/or elements not positively recited as part of the apparatus do not constitute a limitation in any patentable sense with respect to the prior art. Please note that these recitations have not been ignored by the examiner. All of the claimed recitations in applicant’s claims have been considered by the examiner and afforded the appropriate amount of patentable weight. In certain instances during prosecution the examiner’s current interpretations regarding the patentable weight of these limitation may change based on the facts of the case.
The patentability analysis herein provides one or more interpretations and claim mappings of the claimed structures and steps although other interpretations may be possible. In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification and specific limitations from the specification have not been read into the claims.
See MPEP §2111.02, 2173.01 I 2114, and 2173.05(g).
Claim Objections
Claim 20 is objected to because of the following informalities: “a plurality of protrusion” should probably read --a plurality of protrusions--. Appropriate correction is required.
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.
Claims 1-28 are rejected under 35 U.S.C. 112(b) 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.
Independent claim 1 does not positively recite “a plurality of sample holders” as part of the invention. Claims 3, 15, 16, 17 and 19 attempt of define elements of the sample holder assembly (i.e., cover, openings) relative to the sample holders. It is confusing whether applicant intends the plurality of sample holders to be a part of the invention or not. If not, then it is unclear how the interpretate the claims relative to an element that is not part of the invention. Please clarify if applicant intends the plurality of sample holders as part of the invention in claim 1 or an intended use. Currently only claims 4, 17 and 21 positively recite the plurality of sample holders as part of the invention.
Claims 4, 18, 21, 22 and 27 recite “a plurality of sample holders”. It is not clear if these are referring to the same sample holders previously recited in parent claim 1. The examiner recommends changing this to --each of the plurality of sample holders--. Also it is not clear if the applicant intends for the plurality of sample holders to be positively recited. Please clarify if applicant intends the plurality of sample holders as part of the invention or an intended use. Similarly, claim 22 recites “a sample holder”, it is not clear if this referring to a different sample holder already recited in parent claim 1. Claim 27 recites “a sample holder”, it is not clear if this is referring to the same or a different sample holder that the “a respective sample holder” recited in parent claim 24.
The term “near” in claims 4 and 21 is a relative term which renders the claim indefinite. The term “near” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear from the claim or the disclosure what distance applicant considers “a part of the plate near a respective on of the plurality of openings”.
Claim 10 recites comprising an RFID tag configured to identify a source of the shuttle or compatibility of the shuttle. It is not clear what element of the shuttle includes and RFID. It is not clear what applicant means by “identify a source of the shuttle or compatibility of the shuttle”. No source or compatibility of the shuttle relative to anything has been established. This is confusing and indefinite.
Claim 11 recites the cover includes “an alignment feature”. Claim 12 depends from claim 11 and recites the cover includes “first and second alignment features”. It is not clear if the first and second alignment features in claim 12 are referring to the same alignment feature in claim 11. Also, the number of alignment features are not in agreement between claim 11 and 12.
Independent claim 24 does not positively recite “a plurality of sample holders” as part of the invention. Claims 25-28 attempt of define elements of the sample holder assembly (i.e., cover, openings) relative to the sample holders. It is confusing whether applicant intends plurality of sample holders to be a part of the invention. It is confusing whether applicant intends plurality of sample holders to be a part of the invention or not. If not, then it is unclear how the interpretate the claims relative to an element that is not part of the invention.
Claim 25 recites “at least a portion of plate”, this should recite --at least a portion of the plate-- for antecedent basis.
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.
Claims 1-9, 11, 15-19, and 21-28 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Yavilevich (US 2005/0158212; already of record).
Regarding independent claim 1, Yavilevich teaches a sample holder shuttle for holding one or more sample holders for laboratory processing, the shuttle comprising:
a plate 44 including first and second opposed edges, third and fourth opposed edges, and a plurality of openings 48 each configured to receive and hold a respective sample holder (tubes 40) such that a lower portion of the sample holder depends from a bottom side of the plate and is exposed for receiving acoustic energy to treat a sample in the sample holder (Yavilevich teaches tubes 40 sealed by caps 42 loaded inside multi-item carrier (hereafter MIC) 44 before centrifugation and cap removing. MIC 44 intends for transporting and placing with tubes 40 inside the centrifuge and analytical instrument. MIC 44 built in conjunction with wings 46 and deflectable clamps 48. Clamps 48 embrace tubes 40 and hold them during loading-unloading operations. Said horizontal wings 46, intends to arrange the carrier 44 on a robot gripper, see Fig. 4b and para [0184] et seq.);
first and second gripper walls 46 extending upwardly from a top side of the plate at the first and second opposed edges, respectively, the first and second gripper walls being configured to engage with a robotic gripper and support the plate and sample holders received at the plurality of openings (Yavilevich teaches MIC 44 formed with extending up deflectable, springy catches 64. Catches have thickened part that connects with an opening on a sidewall of cap covering 60, see Fig. 4b and para [0190] et seq.) and
a first notch extending inwardly from the third edge configured to align a cover with respect to the plate (Yavilevich notches on the corners of the plate see Figs. 4a-b and 5a-c and part of the fourth edge, wherein the notches make the shuttle plate 44 compatible for the alignment with the cover 60).
Regarding claim 2, Yavilevich teaches the plurality of openings (openings include clamps 48) are configured in a symmetrical rectangular array (see Fig. 4b, 4d).
Regarding claim 3, the sample holders are not positively recited in the claim, so the rim of a sample has not received patentable weight. However, Yavilevich teaches the plurality of openings are configured to engage with a rim (top portion of a sample holder that receives the cap 42) such that portions of the sample holder below the rim hang from the plate (see Fig. 4B).
Regarding claim 4, Yavilevich teaches a plurality of sample holders each configured as a tube 40 with a lower portion and an upper portion, the upper portion configured to engage with a part of the plate near a respective one of the plurality of openings to support the tube such that the lower portion depends from the plate (see Fig. 4d).
Regarding claim 5, Yavilevich teaches the first and second gripper walls each include gripping surfaces (see grooves on element 64 as shown in Fig. 4d) configured to engage with the robotic gripper that face outwardly and away from the plate.
Regarding claim 6, Yavilevich teaches the gripping surfaces are perpendicular to a plane of the plate (see Fig. 4b).
Regarding claims 7 and 8, Yavilevich teaches the first and second gripper walls each include gripping surfaces including an anti-slip feature (grooves on element 64 as shown in Fig. 4d) configured to engage with the robotic gripper.
Regarding claim 9, Yavilevich teaches the first notch on the MIC 44 has surfaces that are parallel to the first and second edges (Yavilevich notches on the corners of the plate see Figs. 4a-b and 5a-c and part all four edges of the plate, wherein the notches make the plate 44 compatible for the alignment with the cover 60).
Regarding claim 11, Yavilevich teaches a cover 60 configured to extend over at least a portion of plate to cover the plurality of openings, the cover including an alignment feature 46 configured to engage with the first notch to align the cover with the plate (see Fig. 4b and Fig. 6)
Regarding claims 15 and 18, Yavilevich teaches a cover 60 configured to extend over at least a portion of plate to cover the plurality of openings, the cover configured to press downwardly on one or more sample holders received at the plurality of openings.
Claim 16 is considered functional/process/language that does not limit the claim with any structural element, the cover is configured to be supported relative to the plate by the one or more sample holders, the cover configured to have a mass sufficient to urge the one or more sample holders into engagement with the plate to orient the one or more sample holders relative to the plate.
As to claim 17, the sample holders are not positively recited so the prior art need not teach each of the one or more sample holders includes a radially extending flange that is positioned on the plate adjacent the opening in which the sample holder is received, and wherein force of the cover on the one or more sample holders urges the flange into contact with the plate to orient the sample holder relative to the plate.
Regarding claims 18, 21, and 23, Yavilevich teaches a plurality of sample holders each configured as a tube 40 with a lower portion and an upper portion, the upper portion configured to engage with a part of the plate near a respective one of the plurality of openings to support the tube such that the lower portion depends from the plate, and wherein the cover is configured to engage with each of the plurality of sample holders to urge the plurality of sample holders into contact with the plate.
Regarding claim 19, Yavilevich teaches each of the plurality of sample holders includes a cap 42 covering an opening at the upper portion of the sample holder, and wherein the cover is configured to engage with the cap to urge the sample holder into contact with the plate.
Claim 22 is directed to a functional/process/intended use language which does not further limit the claim for the reasons delineative above.
Regarding independent claim 24, Yavilevich teaches a sample holder assembly for holding one or more sample holders for laboratory processing, the assembly comprising:
a shuttle having a plate 44 including a plurality of openings 48 each configured to receive and hold a respective sample holder 40 such that a lower portion of the sample holder depends from a bottom side of the plate and is exposed for receiving acoustic energy to treat a sample in the sample holder.
Regarding claim 25, Yavilevich teaches a cover 60 configured to extend over at least a portion of plate to cover the plurality of openings, the cover configured to press downwardly on one or more sample holders received at the plurality of openings (see fig. 4a).
Claim 26 is considered functional/process/ intend use language the cover is configured to be supported relative to the plate by the one or more sample holders, the cover configured to have a mass sufficient to urge the one or more sample holders into engagement with the plate to orient the one or more sample holders relative to the plate.
Regarding claim 27, Yavilevich teaches the plurality of openings 48 are each configured to engage with a sample holder received at the opening to lock the sample holder in place relative to the shuttle.
Regarding claim 28, this is considered functional/process/ intend use language, however Yavilevich does teach wherein the openings are configured to engage with the sample holder to prevent rotation about and movement along a longitudinal axis of the sample holder relative to the shuttle.
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 10, 12-14 and 20, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Yavilevich.
Regarding claim 10, Yavilevich teaches a barcode configured to identify a source of the shuttle or a compatibility of the shuttle (Identification System which is structurally equivalent to a RFID; see para [0183] et seq.) Yavilevich does not explicitly disclose the use of an RFID tag configured to identify a source of the shuttle or compatibility of the shuttle. However, it would have been obvious to one of ordinary skill in the art at the time the claimed invention was effectively filed to substitute the barcode tag in Yavilevich with a RFID tag since it is very well known that RFID tags have many advantages over barcode tag, including RFID tags can be read from a greater distance compared to barcodes, enhancing operational efficiency and can store significantly more data than barcodes, allowing for more detailed information. The applicant is advised that the Supreme Court recently clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that, "[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp." An obviousness determination is not the result of a rigid formula disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int'l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82 USPQ2d 1385, 1397 (2007) (see MPEP § 2143).
Regarding claims 12-14, as best understood, the use of notches and wedges to secure elements such as covers and plate are well known in the art. Consider the dovetail joint which has long been used to join elements in carpentry and is noted from its resistance to be pulled apart.
Regarding claim 20, Yavilevich teaches the cover 60 may have a springy compartments, which keep caps 42 on the tubes during spin and unloading operation. However, Yavilevich does not explicitly teach each cap includes a recess and the cover includes a plurality of protrusions each configured to engage with the recess of a corresponding cap of a sample holder. It would have been obvious to try an attachment between cover and cap using a protrusion and recess, respectively, in order to perform the same function of disclosed in Yavilevich, which teaches engaging the two elements together for secure attachment of the capped tubes on the plate with the cover during transport via the robotic gripper.
The applicant is advised that the Supreme Court has clarified that a claim can be proved obvious merely by showing that the combination of known elements was obvious to try. In this regard, the Supreme Court explained that “[w]hen there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill in the art has a good reason to pursue the known options within his or her technical grasp.” An obviousness determination is not the result of a rigid formal disassociated from the consideration of the facts of the case. Indeed, the common sense of those skilled in the art demonstrates why some combinations would have been obvious where others would not. The combination of familiar elements is likely to be obvious when it does no more than yield predictable results. Furthermore, the simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See KSR Int’l v. Teleflex Inc., 127 Sup. Ct. 1727, 1742, 82, USPQ2d 1385, 1397 (2007), see MPEP 2143).
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
While the following prior art listed below is not specifically discussed in this Official action, the examiner considers the listed prior art relevant to the overall prosecution and may be relied upon in subsequent examination(s) based on applicant’s future response(s).
Marino (US 6,132, 684) teaches a tube holder for resilient plastic test tubes comprising a plurality of plates, each of which has openings that are substantially aligned with the openings in the other plates. One of the plates is moveable in a lateral direction with respect to the other plates so that when the tubes are inserted in the openings and the plate is moved in the lateral direction, the walls of the moveable plate forming the openings exert force against their corresponding tubes to press the tubes against the walls of the other plates that form the openings in those plates to thus secure the tubes in the openings. The moveable plate can be also be released from applying the force against the tubes to allow the tubes to move essentially freely in the openings. Because the bottoms of the tubes are unobstructed, the tubes can be inserted directly into openings of another device corresponding to the openings in the plates.
Mahe (US 5,133,939) which teaches test tube holder and tray assembly designed for use with a dri-bath incubator. The test tube holder comprises a top shelf which comprises a rigid top plate and a sheet of flexible material secured to the rigid plate having a second plurality of openings which are aligned with the openings in the top plate.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
Examiner interviews are available via telephone 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.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798
Prosecution Insights