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 .
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.
Election/Restrictions
Applicant’s election without traverse of Invention I, drawn to a sample holder of claims 1-19 in the reply filed on 4/6/26 is acknowledged.
Claim(s) 20-32 is/are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/6/26.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 3 is objected to because of the following informalities: “suitable move” (line 2) appears that it should be “suitable to move.”
Claim 9 is objected to because of the following informalities: “a portion” (line 1) appears that it should be “wherein a portion.”
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.
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) 1-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claim 1, the claim term “having” (lines 2 and 3) is ambiguous. “Transitional phrases such as ‘having’ must be interpreted in light of the specification to determine whether open or closed claim language is intended. See, e.g., Lampi Corp. v. American Power Products., 228 F.3d 1365, 1376, 56 USPQ2d 1445, 1453 (Fed. Cir. 2000) (quoting MPEP 2111.03(IV)). Here, it is unclear whether “having” is intended to be open or closed claim language. The claim is examined as meaning that the claim language is open.
Dependent claim(s) 2-19 fail to cure the ambiguity of independent claim 1, thus claim(s) 1-19 is/are rejected under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 102
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) 1-3, 5-6, 8, 10-12, 13, and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2020/0337620 to Morrison et al. (hereinafter “Morrison”)
For claim 1, Morrison discloses a sample holder (Abstract) comprising:
a vessel (110) (Fig. 8) (para [0079]) having a wall defining an internal space (unlabeled, but as can be seen in Figs. 8-11) and an opening to the internal space (unlabeled, but as can be seen in Figs. 8-11);
a conduit (120 and/or 150) (Figs. 8-11) (para [0079]) having a distal end positioned in the internal space (as can be seen in Fig. 11) and a proximal end extending from the internal space (see Figs. 8-11), the conduit configured to (Examiner’s Note: functional language, i.e., capable of) receive a liquid sample into the proximal end of the conduit (Fig. 10) (para [0080]-[0081]); and
a cap (160) (Figs. 16-18) (para [0093]) configured to (Examiner’s Note: functional language, i.e., capable of) move relative to the vessel such that movement of the cap relative to the vessel from a first position toward a second position causes a pressure differential between the proximal and distal ends of the conduit suitable to move a liquid sample from the conduit into the internal space (see Figs. 15-18) (para [0043]-[0044] and [0071]) (also see para [0113]-[0116]).
For claim 2, Morrison further discloses wherein the cap is configured to (Examiner’s Note: functional language, i.e., capable of) cause a pressure below ambient pressure in the internal space in response to movement of the cap relative to the vessel (para [0043]-[0044] and [0071]) (also see para [0113]-[0116]).
For claim 3, Morrison further discloses wherein the pressure below ambient pressure is suitable to move a liquid sample from the conduit into the internal space via the distal end (para [0043]-[0044] and [0071]) (also see para [0113]-[0116]).
For claim 5, Morrison further discloses wherein the cap is configured to cause the pressure differential in response to linear movement of the cap relative to the vessel (see Figs. 15-18).
For claim 6, Morrison further discloses wherein the cap (Examiner’s Note: the cap to also include 130 for this claim) is configured to (Examiner’s Note: functional language, i.e., capable of) sealingly engage with an outer surface of the wall of the vessel (as can be seen in Fig. 11).
For claim 8, Morrison further discloses wherein the cap (Examiner’s Note: the cap to also include 130 for this claim) is configured to (Examiner’s Note: functional language, i.e., capable of) sealingly engage with an inner surface of the wall of the vessel (as can be seen in Fig. 11).
For claim 10, Morrison further discloses wherein the conduit includes a capillary tube (150) configured to (Examiner’s Note: functional language, i.e., capable of) draw a blood sample into the capillary tube by contacting blood to the proximal end (as can be seen in Fig. 10) (para [0080]-[0081]).
For claim 11, Morrison further discloses wherein the conduit is fixed to the cap (para [0093]).
For claim 12, Morrison further discloses wherein the cap and the conduit are removable from the vessel by moving the cap from the first position to the second position (as can be seen in Figs. 15-18).
For claim 13, Morrison further discloses a cover configured to engage with the vessel to close the opening and seal the internal space closed with the cap and conduit removed from the vessel (see “Automatically Sealed Vessel” in Fig. 18).
For claim 16, Morrison further discloses wherein the conduit extends from an upper side of the cap (as can be seen in Figs. 9-11) (also see Fig. 1) and the cap includes a guard (tapered portion of 160) (alternatively, the cap including both 140 and 160 with 160 reading on the claimed “guard”) that extends from the upper side of the cap adjacent the proximal end of the conduit (as can be seen in Figs. 8-10).
Claim Rejections - 35 USC § 103
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.
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) 4, 7, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morrison in view of U.S. Patent Application Publication No. 2017/0042460 to Holmes et al. (hereinafter “Holmes”).
For claim 4, Morrison further discloses wherein the cap is configured to (Examiner’s Note: functional language, i.e., capable of) cause the pressure differential in response to a “non-linear pathway” of the cap relative to the vessel (para [0044]).
Morrison does not expressly disclose that the non-linear pathway is a rotation.
However, Holmes teaches rotation (para [0090] and/or [0130]).
It would have been obvious to a skilled artisan to modify Morrison where the non-linear pathway is a rotation, in view of the teachings of Holmes, because rotation is a suitable type of non-linear motion that would lead to the predictable result of moving the parts of Morrison relative to each other.
For claim 7, Morrison does not expressly disclose wherein a portion of the outer surface of the wall includes a channel that provides a vent for the internal space when the cap is at the first position.
However, Holmes teaches wherein a portion of an outer surface of a wall (unlabeled, but as can be seen in Fig. 11I) includes a channel (1182 and/or 1184) that provides a vent (1190 and/or 1192) for an internal space (unlabeled, but as can be seen in Fig. 11I) when a cap is at a first position (para [0201]).
It would have been obvious to a skilled artisan to modify Morrison wherein a portion of the outer surface of the wall includes a channel that provides a vent for the internal space when the cap is at the first position, in view of the teachings of Holmes, as an additional means/structure or a substitutionary means/structure by which to vent the vessel in Morrison. Such a modification would lead to the predictable result of venting the inside of the vessel of Morrison after the vacuum has been applied to pull the sample into the vessel and this modification would just be another way to do that.
For claim 9, Morrison does not expressly disclose wherein a portion of the inner surface of the wall includes a channel that provides a vent for the internal space when the cap is at the first position.
However, Holmes teaches wherein a portion of an inner surface of a wall (unlabeled, but as can be seen in Fig. 11I) includes a channel (1182 and/or 1184) that provides a vent (1190 and/or 1192) for an internal space (unlabeled, but as can be seen in Fig. 11I) when a cap is at a first position (para [0201]).
It would have been obvious to a skilled artisan to modify Morrison wherein a portion of the inner surface of the wall includes a channel that provides a vent for the internal space when the cap is at the first position, in view of the teachings of Holmes, as an additional means/structure or a substitutionary means/structure by which to vent the vessel in Morrison. Such a modification would lead to the predictable result of venting the inside of the vessel of Morrison after the vacuum has been applied to pull the sample into the vessel and this modification would just be another way to do that.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morrison in view of U.S. Patent Application Publication No. 2017/0102299 to Laugharn Jr. et al. (hereinafter “Laugharn Jr.”).
For claim 14, Morrison does not expressly disclose a desiccant associated with the cover, positionable in the internal space and configured to dry a blood sample enclosed in the internal space.
However, Laugharn Jr. teaches a desiccant (73) associated with a cover (Fig. 2) (para [0009]), positionable in the internal space (Fig. 2) and configured to dry a blood sample enclosed in the internal space (para [0009]).
It would have been obvious to a skilled artisan to modify Morrison to include a desiccant associated with the cover, positionable in the internal space and configured to dry a blood sample enclosed in the internal space, in view of the teachings of Laugharn Jr., for the obvious advantage of stabilizing the blood sample.
For claim 15, Morrison does not expressly disclose wherein the desiccant extends from the cover and is configured to be positioned in the internal space with the cover engaged with the vessel.
However, Laugharn Jr. teaches wherein the desiccant extends from the cover (Fig. 2) and is configured to be positioned in the internal space with the cover engaged with the vessel (Fig. 2).
It would have been obvious to a skilled artisan to modify Laugharn Jr. wherein the desiccant extends from the cover and is configured to be positioned in the internal space with the cover engaged with the vessel, in view of the teachings of Laugharn Jr., for the obvious advantage of stabilizing the blood sample.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morrison in view of U.S. Patent Application Publication No. 2022/0061822 to Robbins et al. (hereinafter “Robbins”).
For claim 17, Morrison does not expressly disclose a holder configured to engage with the vessel and hold the vessel in an upright position on a surface with the proximal end of the conduit extending upwardly from the vessel.
However, Robbins teaches a holder (110/111) configured to (Examiner’s Note: functional language, i.e., capable of) engage with the vessel and hold the vessel in an upright position on a surface with the proximal end of the conduit extending upwardly from the vessel (as can be seen in Figs. 21-22 and 24-25).
It would have been obvious to a skilled artisan to modify Morrison to include a holder configured to engage with the vessel and hold the vessel in an upright position on a surface with the proximal end of the conduit extending upwardly from the vessel, in view of the teachings of Robbins, for the obvious advantage of providing a means by which to store Morrison’s device.
For claim 18, Morrison does not expressly disclose wherein the holder and the vessel include complementary engagement features to removably engage the vessel with the holder.
However, Robbins teaches wherein the holder and the vessel include complementary engagement features (130/132) (Figs 25A-B) to removably engage the vessel with the holder (as can be seen in Figs. 25A-B).
It would have been obvious to a skilled artisan to modify Morrison wherein the holder and the vessel include complementary engagement features to removably engage the vessel with the holder, in view of the teachings of Robbins, for the obvious advantage of providing a means by which to securely store Morrison’s device.
For claim 19, Morrison further discloses wherein the cap is configured to (Examiner’s Note: functional language, i.e., capable of) support the vessel and conduit in a horizontal position on a surface with the conduit extending horizontally (see Fig. 33).
Morrison does no expressly disclose the holder is configured to support the vessel and conduit in a horizontal position.
However, Robbins teaches the holder is configured to (Examiner’s Note: functional language, i.e., capable of) support the vessel and conduit in a horizontal position (most directly Fig. 25B, but as can also be seen in Figs. 21-22 and 24-25A).
It would have been obvious to a skilled artisan to modify Morrison such that the holder is configured to support the vessel and conduit in a horizontal position, in view of the teachings of Robbins, for the obvious advantage of providing a means by which to securely store Morrison’s device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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