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 .
The claims dated 5/28/2024 are under consideration.
Priority
The present application is a continuation of US 17/412,376 (filed 8/26/2021), which is a divisional of US 16/543,421 (file 8/16/2019), which claims benefit of provisional application 62/719,567 (filed 8/17/2018).
Priority is recognized.
Drawings
High resolution copies of the drawings may be accessed via PAIR/Patent Center Retrieval using the Supplemental Content tab.
Specification
The disclosure is objected to because of the following informalities: the specification does not provide the patent number of issued US application 17/412,376, which is 11,998,910.
Appropriate correction is required.
Claim Interpretation
Claim 1 is drawn to a cartridge. The cartridge comprises the following structural features:
a housing having first and second major surfaces and defining a guide mechanism; and
a plurality of containers disposed in the housing;
each container of the plurality of containers having a receptacle and a lid;
the lid formed of a clip and a seal;
a frit disposed in the receptacle in an enclosed space defined by the receptacle and the seal;
the seal having an inlet and an outlet in fluid communication with an enclosed space; and
the frit including a nucleotide concentrate.
The term “frit” is not defined in the claims other that it includes a nucleotide concentrate. The term is interpreted as an art recognized term in the laboratory and industrial chemical field as a filter made by the sintering together of glass particles.
Claim 13 is drawn to a cartridge. The cartridge comprises the following structural features:
a housing having first and second major surfaces and defining a guide mechanism; and
a plurality of containers disposed in the housing;
each container of the plurality of containers having a receptacle and a lid;
the lid formed of a clip and a seal;
a frit disposed in the receptacle in an enclosed space defined by the receptacle and the seal; and
the seal having an inlet and an outlet in fluid communication with an enclosed space.
The term “frit” is not defined in the claims other that it includes a nucleotide concentrate. The term is interpreted as an art recognized term in the laboratory and industrial chemical field as a filter made by the sintering together of glass particles.
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 10, 11, 12 and 20 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.
Regarding claim 10, the claim recites “the receiver”. The recitation lacks proper antecedent basis.
Regarding claim 11, the claim recites “the receiver”. The recitation lacks proper antecedent basis.
Regarding claim 12, the claim recites “the receiver”. The recitation lacks proper antecedent basis.
Regarding claim 20, the claim recites “the receiver”. The recitation lacks proper 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.
Claim(s) 1-5, 10-15 and 20 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Schultz (US 2015/0361488 A1).
Regarding claims 1, 4 and 5, Schultz teaches “housing” 1900 having “major surfaces” that define a guide mechanism (protrusions extending from 1902 that run nearly the length of 1902 of Fig. 12). The housing includes a plurality of containers (Fig. 12) and the containers include nucleotides (para. 37) disposed on a frit (para. 60, 71 and 80).
A frit is a known porous or sponge-like material (para. 60) and while a solution flows into the container, it collects the nucleotide by flowing through the pores of the frit, making it fluid preamble.
The containers include an enclosure as a reagent storage container.
Schultz teaches the container has a receptacle or first portion, a seal or second portion and a clip in the form of a locking mechanism or suitable attachment mechanism (para. 54; Fig. 5). The frit may be within the first or second portion and because the two portions define the internal cavity of the container, together they enclose the frit.
Schultz further teaches a seal or second portion has opening on the side to allow fluid into the container and the frit and a central bore around which a ringed wall is positioned. See Fig. 7
Regarding claims 2 and 3, Schultz teaches the nucleotide reagents may be concentrated liquid solutions (para. 32, 50) or lyophilized concentrate (para. 32, 50, 71).
Regarding claims 10 and 11, Schultz teaches a “ridge” or flange for engaging with a receiver’s lip within an enclosure (para. 62; Fig. 7).
Regarding claim 12, Schultz teaches a receiver includes a ridge to engage with a lip or overhang of the housing (Fig. 12 and 15).
Regarding claims 13 and 14, Schultz teaches “housing” 1900 having “major surfaces” that define a guide mechanism (protrusions extending from 1902 that run nearly the length of 1902 of Fig. 12). The housing includes a plurality of containers (Fig. 12) and the containers contain a frit (para. 60, 71 and 80).
A frit is a known porous or sponge-like material (para. 60) and while a solution flows into the container, it collects the nucleotide by flowing through the pores of the frit, making it fluid preamble.
The containers include an enclosure a reagent storage container.
Schultz teaches the container has a receptacle or first portion, a seal or second portion and a clip in the form of a locking mechanism or suitable attachment mechanism (para. 54; Fig. 5). The frit may be within the first or second portion and because the two portions define the internal cavity of the container, together they enclose the frit.
Schultz further teaches a seal or second portion has opening on the side to allow fluid into the container and the frit and a central bore around which a ringed wall is positioned. See Fig. 7
Regarding claim 15, Schultz teaches the container has a receptacle or first portion, a seal or second portion and a clip in the form of a locking mechanism or suitable attachment mechanism (para. 54; Fig. 5). The frit may be within the first or second portion and because the two portions define the internal cavity of the container, together they enclose the frit.
Regarding claim 20, Schultz teaches a “ridge” or flange for engaging with a receiver’s lip within an enclosure (para. 62; Fig. 7).
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 1 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,998,910 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 13 encompass the “cartridge” of the system of the ‘910 claims.
Claims 2-5, 10-12, 14-15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,998,910 B2 in view of Shultz (US 2015/0361488 A1).
The claim sets differ in regards to present claims 2, 3
However, Shultz teaches the nucleotide concentrates of claims 2 and 3 were known (para. 32).
Shultz teaches that porous frits were known (para. 60), which makes the frit fluid permeable as encompassed by claims 4 and 14.
Schultz teaches a seal has opening on the side to allow fluid into the container and the frit and a central bore around which a ringed wall is positioned to provide fluidic access to a first as encompassed by claims 5 and 15. See Fig. 7.
Shultz teaches the elements of claims 10-12 and 20 as noted in the above rejections.
It would have been prima facie obvious to the ordinary artisan at the time of filing to have modified the ’910 claims in view of Shultz based on design preferences.
Conclusion
Claims 6-9 and 16-19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH G DAUNER whose telephone number is (571)270-3574. The examiner can normally be reached 7 am EST to 4:30 EST with second Fridays Off.
Examiner interviews are available via telephone, in-person, 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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wu-Cheng Winston Shen can be reached at 5712723157. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH G. DAUNER/Primary Examiner, Art Unit 1682
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