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 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.
Response to Amendment
Preliminary amendments to the claims, filed on 12/19/2024, are accepted and do not introduce new matter.
Claims 2-11 are pending; claim 1 was cancelled.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the generic placeholder “feature" but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “self-align feature” in claim 3. This limitations do not invoke 112(f), since they are modified by sufficient structure: coupling.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,998,939. Although the claims at issue are not identical, they are not patentably distinct from each other because both claim the same structural elements in their device, and both claim the same steps in their methods:
Application 18/649,865
Patent 11,998,939
Claim 2. A dispenser for transferring a predetermined quantity of a liquid, comprising: a transducer, comprising: a capillary tube having a tip at a distal end of the capillary tube; a piezoelectric actuator operatively coupled to the capillary tube at a location proximal of the tip; an aperture at the tip of the tube; and a supply line located upstream of the capillary tube and configured to couple to and supply the liquid to the capillary tube; wherein actuation of the piezoelectric actuator causes a pressure wave to propagate from said location of the capillary tube toward the tip of the capillary tube such that motion at said location of the capillary tube is transmitted to the tip of the capillary tube, thereby causing a droplet of a predetermined volume to be ejected from the aperture; wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation and provide single drop stability over a range of drop sizes above and below a droplet size corresponding to a diameter of the aperture.
Claim 6. The dispenser of Claim 2, wherein the capillary tube comprises polyether ether ketone (PEEK).
Claim 1. A dispenser for transferring a predetermined quantity of a liquid, comprising: a longitudinal transducer, comprising: a capillary tube comprising polyether ether ketone (PEEK) and having a tip at a distal end of the capillary tube; a piezoelectric actuator operatively coupled to the capillary tube at a location proximal of the tip; an aperture at the tip of the capillary tube; and a flexible supply line located upstream of the capillary tube and configured to couple to and supply the liquid to the capillary tube; wherein actuation of the piezoelectric actuator causes a pressure wave to propagate from said location of the capillary tube toward the tip of the capillary tube such that radial motion at said location of the capillary tube is transmitted as distally extending axial motion of the tip of the capillary tube, thereby causing a droplet of a predetermined volume to be ejected from the aperture; wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation and provide single drop stability over a range of drop sizes above and below a single droplet size corresponding to borosilicate glass capillary tubes having a diameter of the aperture equal to the diameter of the aperture of the capillary tube.
Claim 3. The dispenser of Claim 2, wherein the coupling between the capillary tube and the supply line provides a self-aligning feature.
Claim 2. The dispenser of claim 1, wherein the coupling between the capillary tube and the flexible supply line provides a self-aligning feature.
Claim 4. The dispenser of Claim 3, wherein the coupling between the capillary tube and the piezoelectric actuator is configured to allow replacement of capillary tubes and is adjustable to provide sufficient mechanical stability to reduce variations in droplet volumes between capillary tubes.
Claim 3. The dispenser of claim 1, wherein the operative coupling between the capillary tube and the piezoelectric actuator is configured to allow replacement of capillary tubes and is adjustable to provide sufficient mechanical stability to reduce variations in droplet volumes between capillary tubes.
Claim 5. The dispenser of Claim 2, wherein the operative coupling between the capillary tube and the piezoelectric actuator is a double V clamp.
Claim 4. The dispenser of claim 1, wherein the operative coupling between the capillary tube and the piezoelectric actuator is a double V clamp.
Claim 7. The dispenser of Claim 2, wherein the capillary tube comprises an aperture plate that defines the aperture.
Claim 5. The dispenser of claim 1, wherein the capillary tube comprises an aperture plate that defines the aperture.
Claim 8. The dispenser of Claim 7, wherein the aperture plate is gold-plated nickel or sapphire.
Claim 6. The dispenser of claim 5, wherein the aperture plate is gold-plated nickel or sapphire
Claim 9. A method of transferring a predetermined quantity of a liquid, comprising: coupling a supply line to a capillary tube; supplying liquid from the supply line to the capillary tube, wherein the capillary tube comprises a distal end with a tip and an aperture thereat; coupling a piezoelectric actuator to the capillary tube at a location along the capillary tube; actuating the piezoelectric actuator such that a pressure wave propagates from said location along the capillary tube toward the tip of the capillary tube and motion at said location is transmitted to the tip, thereby causing a droplet of a predetermined volume to be ejected from the aperture; wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation and provide single drop stability over a range of drop sizes.
Claim 7. A method of transferring a predetermined quantity of a liquid, comprising: coupling a flexible supply line to a capillary tube, the capillary tube comprising polyether ether ketone (PEEK) using a self-aligning feature; supplying liquid from the flexible supply line to the capillary tube, wherein the capillary tube comprises a distal end with a tip and an aperture thereat; coupling a piezoelectric actuator to the capillary tube at a location along the capillary tube, wherein the coupling between the piezoelectric actuator and the capillary tube is configured to allow replacement of capillary tubes and is adjustable to provide substantially uniform mechanical stability between the piezoelectric actuator and replaceable capillary tubes; actuating the piezoelectric actuator such that a pressure wave propagates from said location along the capillary tube toward the tip of the capillary tube and radial motion at said location is transmitted as axial motion of the tip, thereby causing a droplet of a predetermined volume to be ejected from the aperture; wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation and provide single drop stability over a range of drop sizes.
Claim 10. The method of Claim 9, further comprising adjusting the coupling between the piezoelectric actuator and the capillary tube to reduce variation in droplet volume between capillary tubes.
Claim 8. The method of claim 7, further comprising adjusting the coupling between the piezoelectric actuator and the capillary tube to reduce variation in droplet volume between capillary tubes.
Claim 11. The method of Claim 9, further comprising adjusting a piezoelectric voltage, a charge resistor, or both a voltage and a charge resistor to enable dispensing a range of liquid viscosities at the same predetermined droplet volumes.
Claim 9. The method of claim 7, further comprising adjusting a piezoelectric voltage, a charge resistor, or both a voltage and a charge resistor to enable dispensing a range of liquid viscosities at equivalent predetermined droplet volumes.
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.
Claims 2-5 and 7-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ivri (U.S. 2012/0304929).
Regarding claim 2, Ivri teaches a dispenser (100) for transferring a predetermined quantity of a liquid (see abstract), comprising:
a transducer (40), comprising:
a capillary tube (114) having a tip (42) at a distal end of the capillary tube (as seen in Fig 2);
a piezoelectric actuator (126) operatively coupled to the capillary tube at a location proximal of the tip (as seen in Fig 2, the actuator is in a location that resembles that of Applicant’s Fig 2);
an aperture (136) at the tip of the tube; and
a supply line (as seen in Fig 1A, there is a supply line connected to valve 24) located upstream of the capillary tube (the supply line sends liquid to the upstream end of tube 113, see Fig 1B) and configured to couple to and supply the liquid to the capillary tube (as seen in Figs 1A-1B and disclosed in Par 0095);
wherein actuation of the piezoelectric actuator causes a pressure wave to propagate from said location of the capillary tube toward the tip of the capillary tube such that motion at said location of the capillary tube is transmitted to the tip of the capillary tube (as disclosed in Par 0109), thereby causing a droplet of a predetermined volume to be ejected from the aperture (as disclosed in Par 0112);
wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation (Par 0124 discloses specific modulus of elasticity used for the capillary tube for desired amplitude and oscillation of the tube; while Par 0119 discloses that an acoustic pressure or stress wave propagates through the wall of the tube, i.e. acoustic noise is dampened along the length of the tube) and provide single drop stability over a range of drop sizes above and below a droplet size corresponding to a diameter of the aperture (as disclosed in Par 0140, the dispenser produces a range of drop sizes that correspond to the diameter of the aperture; furthermore, Par 0105 discloses that fine tuning a pulse voltage signal 138 changes the structure and volume of the droplets; therefore, the dispenser provides single drop stability over a range of drop sizes that could be above or below the diameter of the aperture, as claimed).
Regarding claim 3, Ivri teaches the dispenser of Claim 2, wherein the coupling between the capillary tube and the supply line provides a self-aligning feature (as seen in Fig 4, the capillary tube 114 attaches to a V-groove on structural portions 122 and 124 for self-alignment, as disclosed in Par 0142; furthermore, the tube is attached to the supply line, as disclosed in Par 0095).
Regarding claim 4, Ivri teaches the dispenser of Claim 3, wherein the coupling between the capillary tube and the piezoelectric actuator (coupling done through V clamp of portions 142 and 144, see Fig 4) is configured to allow replacement of capillary tubes (Par 0123) and is adjustable (through preloading device 128) to provide sufficient mechanical stability to reduce variations in droplet volumes between capillary tubes (paragraph 0028 discloses the device is made with clamping that allows for replacement of different tubes; as seen in the figures the coupling devices 142 and 144 are the same structure, as claimed, thus they can replace the tubes and still provide sufficient mechanical stability, as claimed).
Regarding claim 5, Ivri teaches the dispenser of Claim 2, wherein the operative coupling between the capillary tube and the piezoelectric actuator is a double V clamp (V clamps 142 and 144, see Fig 4).
Regarding claim 7, Ivri teaches the dispenser of Claim 2, wherein the capillary tube comprises an aperture plate (118) that defines the aperture (as seen in Figs 2-3).
Regarding claim 8, Ivri teaches the dispenser of Claim 7, wherein the aperture plate is gold-plated nickel or sapphire (as disclosed in paragraph 0128, the plate 118 comprises sapphire).
Regarding claim 9, Ivri teaches a method of transferring a predetermined quantity of a liquid (Par 0092), comprising:
coupling a supply line (as seen in Fig 1A, there is a supply line connected to valve 24 that sends liquid from source 16 to the dispenser 100, which sends liquid to the upstream end of tube 114) to a capillary tube (tube 114, as seen in Fig 1B);
supplying liquid from the supply line to the capillary tube (as seen in Fig 1, liquid is supplied from source 16 to dispenser 100 and into capillary tube 114), wherein the capillary tube comprises a distal end with a tip (42) and an aperture (136) thereat;
coupling a piezoelectric actuator (126) to the capillary tube at a location along the capillary tube (as seen in Fig 2);
actuating the piezoelectric actuator such that a pressure wave propagates from said location along the capillary tube toward the tip of the capillary tube and motion at said location is transmitted to the tip (as disclosed in paragraph 0109), thereby causing a droplet of a predetermined volume to be ejected from the aperture (as disclosed in paragraph 0112);
wherein the capillary tube has a modulus of elasticity configured to dampen acoustical noise from the actuation (Par 0124 discloses specific modulus of elasticity used for the capillary tube for desired amplitude and oscillation of the tube; while Par 0119 discloses that an acoustic pressure or stress wave propagates through the wall of the tube, i.e. acoustic noise is dampened along the length of the tube) and provide single drop stability over a range of drop sizes (as disclosed in Par 0140, the dispenser produces a range of drop sizes; furthermore, Par 0105 discloses that fine tuning a pulse voltage signal 138 changes the structure and volume of the droplets in a controlled manner, i.e. stable manner).
Regarding claim 10, Ivri teaches the method of Claim 9, further comprising adjusting (through preloading device 128) the coupling between the piezoelectric actuator and the capillary tube (128 adjust the coupling between actuator 126 and tube 114, as seen in Figs 2-3) to reduce variation in droplet volume between capillary tubes (paragraph 0028 discloses the device is made with clamping that allows for replacement of different tubes; as seen in the figures the coupling devices 142 and 144 are the same structure, as claimed; further, paragraph 0142 discloses adjusting the coupling in order to properly fit different tubes, while maintaining even distribution of forces and enhance the balance of the device, thus ensuring consistent droplet volume).
Regarding claim 11, Ivri teaches the method of Claim 9, further comprising adjusting a piezoelectric voltage, a charge resistor, or both a voltage and a charge resistor to enable dispensing a range of liquid viscosities at the same predetermined droplet volumes (as disclosed in paragraph 0105, the pulse voltage is fine-tuned to improve droplet structure and droplet volume control; as disclosed in paragraph 0171, the device is capable of dispensing fluids with a wide range of viscosity).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ivri (U.S. 2012/0304929) in view of LaMarr et al (U.S. 2010/0024527).
Regarding claim 6, Ivri teaches the dispenser of Claim 2. However, Ivri does not teach the dispenser wherein the capillary tube comprises polyether ether ketone (PEEK).
LaMarr teaches a system for handling fluidic examples wherein tubes are made out of polyether ether ketone (PEEK), as disclosed in paragraph 0060.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ivri to incorporate the teachings of LaMarr to provide the capillary tube so that is comprises PEEK because that material has strong chemical resistance and can be manufactured in a wide range of interior and exterior diameters (as disclosed in paragraph 0060 of LaMarr), which would be beneficial to the device of Ivri since it deals with tubes of different diameters (see Par 0137).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN C BARRERA whose telephone number is (571)272-6284. The examiner can normally be reached on M-F Generally 10am-4pm and 6-8pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARTHUR O. HALL can be reached on 571-270-1814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If there are any inquiries that are not being addressed by first contacting the Examiner or the Supervisor, you may send an email inquiry to TC3700_Workgroup_D_Inquiries@uspto.gov.
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/JUAN C BARRERA/
Examiner, Art Unit 3752
/ARTHUR O. HALL/Supervisory Patent Examiner, Art Unit 3752