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, Claims 1, 3-9, 11, 13 and 14, in the reply filed on 07/08/2026 is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “12” has been used to designate both tip mounting shaft and mounting shaft. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “38” has been used to designate both barrel and tip barrel. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “104” has been used to designate: inside surface, inside circumferential surface, lateral inside surface, annular wall and lateral seal. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 3-9, 11, 13 and 14 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, 3, 6, 7 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. The claims are unclear because the tip mounting shaft is not a positive element of the claimed disposable pipette tip. Dependent claims relating to the tip mounting shaft and elements of the tip mounting shaft are similarly unclear. The claims are further unclear because the claims recite ‘tip mounting shaft’ and ‘mounting shaft’, rendering the claims unclear whether the terms are referring to the same element or not.
Claim 1 recites the limitation "the mounting shaft" in L3-4. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 is unclear reciting “its.”
Claim 1 recites the limitation "the tip shoulder" in L16. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the collar opening" in L17. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is unclear reciting “its [...] it.”
Claim 8 recites the limitation "the tip barrel" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the tip barrel" in L2. There is insufficient antecedent basis for this limitation in the claim.
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) 1, 3-9, 11, 13 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kelly (Kelly et al. US 2011/0076205 A1) in view of Blaszcak (Blaszcak et al. US 2004/0011145 A1).
Regarding claim 1, Kelly teaches:
1. A disposable pipette tip comprising:
a barrel (e.g., 38) having a lower opening (e.g., 44) through which liquid is aspirated into the barrel and dispensed from the barrel, wherein the diameter of the lower opening is less than the diameter of the barrel at an upper end of the barrel (i.e., diameter of the circumferential sealing ring 48, see Figs. 2-5 for example);
a collar (e.g., 36) having a continuous inner surface with a circular circumference in its relaxed state, an upper opening (i.e., opening of 48) for receiving the tip mounting shaft (e.g., 12), and a lower end with an inside diameter that is larger than an inside diameter of the upper end of the barrel (i.e., the lower end of the collar 36 has a larger inside diameter than at the upper end of the barrel (48));
a circumferential tip shoulder (e.g., 40) connecting the lower end of the collar to the upper end of the barrel (see Fig. 4 for example);
However, Kelly does not explicitly teach: a circular cantilever sealing ring having an annular wall extending from the tip shoulder towards the collar opening, wherein the pipette tip further comprises a circumferential gap above the circumferential tip shoulder between the annular wall of the circular cantilever sealing ring and the tip collar; and said annular wall having a having a top edge that abuts the stop on the pipette mounting shaft when the tip is fully mounted to the tip mounting shaft.
Blaszcak teaches: A disposable pipette tip comprising:
a barrel (e.g., 5) having a lower opening (e.g., 16) through which liquid is aspirated into the barrel and dispensed from the barrel, wherein the diameter of the lower opening is less than the diameter of the barrel at an upper end of the barrel (e.g., 14; see Fig. 1 for example);
a collar (e.g., 22) having a continuous inner surface with a circular circumference in its relaxed state, an upper opening for receiving a tip mounting shaft (e.g., 68);
a circumferential tip shoulder (e.g., 20) connecting a lower end of the collar to the upper end of the barrel (see Figs. 1-2 for example);
a circular cantilever sealing ring (e.g., 24) having an annular wall extending from the circumferential tip shoulder towards the collar, wherein the pipette tip further comprises a circumferential gap (e.g., 46) above the circumferential tip shoulder between the annular wall of the circular cantilever sealing ring and the circumferential tip collar (see Figs. 1-2 for example); and
said annular wall having a having a top edge (see Fig. 2 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 pipette tip of Kelly with the teachings Blaszcak, to allow the pipette tip to be easily received and released and the force required to form a fluid-tight annular seal is minimized (Blaszcak ¶ 0024).
Regarding claim 1, modified Kelly meets all the structural limitations recited by the instant invention. Applicants’ preamble recites “for use with a pipetting system having a tip mounting shaft that includes an upper locking section having a stop, multiple outwardly extending lobes located above the stop and spaced circumferentially around the locking section of the mounting shaft, and recessed relief portions spanning circumferentially between the lobes and recessed relative to the lobes, each respective lobe having a peak being spaced longitudinally above the stop on the mounting shaft by a predetermined distance, and said tip mounting shaft also including a sealing area located below the stop, said disposable pipette tip”. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With regard to limitations in claims 1, 3, 6, 7, (e.g., [...] for laterally engaging and sealing against the sealing area of the mounting shaft when the tip is fully mounted to the mounting shaft; wherein the collar of the disposable pipette tip is sufficiently flexible to distort outwardly at the lobes on the mounting shaft and inwardly at the recessed relief portions on the mounting shaft between the lobes when the pipette tip is being mounted on the tip mounting shaft, and wherein the circumferential shoulder has sufficient structural integrity to maintain adequate roundness of the circular cantilever sealing ring so that the annular wall seals laterally against the sealing area of the mounting shaft when the tip is fully mounted and the top edge of the annular wall abuts the stop on the tip mounting shaft; wherein when the disposable pipette tip is fully mounted on the tip mounting shaft and the annular wall engages the stop on the mounting shaft, the locking ring facilitates proper alignment of the disposable pipette tip on the mounting shaft, 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 3-9, 13 & 14, modified Kelly teaches:
3. The disposable pipette tip as recited in claim 1 further comprising a locking ring (e.g., 48) extending inward from the continuous inner surface of the collar and around the entire circumference of the collar or substantially around the entire circumference of the collar and located at a rim of the upper opening of the collar (see Fig. 5 for example), wherein when the disposable pipette tip is fully mounted on the tip mounting shaft and the annular wall engages the stop on the mounting shaft, the locking ring facilitates proper alignment of the disposable pipette tip on the mounting shaft (see ¶ 0037 for example).
4. The disposable pipette tip as recited in claim 1 wherein the circumferential shoulder reduces the internal bore diameter of the pipette tip by 0.1 to 1.0 mm (see ¶ 0036 for example).
5. The disposable pipette tip as recited in claim 1 wherein an inside surface of the annular wall slants inward from the circumferential shoulder toward the opening in the collar (see Blaszcak Fig. 2 for example).
6. The disposable pipette tip as recited in claim 5 wherein an inside surface of the annular wall forms an interference (see Fig. 8 for example).
7. The disposable pipette tip as recited in claim 5 wherein the slant of the inside surface continues as the surface extends downward to a location (see Fig. 5 for example).
8. The disposable pipette tip as recited in claim 3 further comprising a stabilizing ring (e.g., 54) located in an upper portion of the tip barrel which extends inward from the inside surface of the barrel (see Fig. 5 for example).
9. The disposable pipette tip as recited in claim 1 further comprising a stabilizing ring (e.g., 54) located in an upper portion of the barrel (see Fig. 5 for example).
13. The disposable pipette tip as recited in claim 3 wherein the circumferential locking ring includes a void (e.g., 52).
14. The disposable pipette tip as recited in claim 1 wherein the pipette tip is made of molded polypropylene (¶ 0002).
Regarding claim 11, modified Kelly does not explicitly teach: 11. The disposable pipette tip as recited in claim 1 wherein the height of the circumferential gap is in the range of 0.28 to 0.38 mm. It would have been obvious to one of ordinary skill in the art at the time the invention was made to further modify the device to achieve a fluid-tight annular seal with the pipette (Kelly ¶ 0041; Blaszcak Abstract). It is noted that selecting appropriate dimension for the design of the device would have been obvious to one of ordinary skill in the art.
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, 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.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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