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 with traverse of A1: (ii) multi-channel, A2: (i) manual, and A3: (i) positive displacement sampling pipette, in the reply filed on 07/08/2026 is acknowledged. The traversal is on the ground(s) that “First, the Office points out that when claims are directed to multiple categories of inventions, aside from the five recognized combinations, then unity of invention might not be present. However, all of the claims of the present application are directed to the same category of invention as apparatuses. Therefore, this test is irrelevant to unity of invention. Further, all of the claims depend from claim 1, and are therefore directed to the common inventive concept set forth in claim 1. The Office has not cited any prior art or otherwise established that claim 1 fails to set forth a special technical feature.” This is not found persuasive because the restriction was placed based on a priori, each species as noted in the 07/08/2026 Requirement for Restriction represents a distinct device configuration, not shared by the other species.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-15 are being examined.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “44” has been used to designate movable capillary retention portion, movable retention portion, movable retention part and movable portion. 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 under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “radial stop member” (claim 7) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 1-15 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 1-15 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. Regarding claim 1, the phrase "intended" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Dependent claims are rejected reciting the limitations and/or based on further claim dependency. Claim 7 is indefinite for reciting the same phrase.
Claim 1 is unclear reciting “it” because it is unclear what is being referred.
Claim 1 is unclear reciting “the locking member occupies a locking position” because it is unclear what the applicant is trying to claim; and whether the locking position is part of the claimed invention.
Claim 1 is unclear whether the “movable capillary retention portion”, “movable retention part”, “movable retention portion”, “movable part”, and “movable portion” are the same or different elements.
Claims 1 and 3 are unclear reciting “its” because it is unclear what is being referred.
Claim 2 is unclear reciting “wherein, in the tip, the link between the movable retention portion of the capillary and the tip body is a flexible, elastically deformable link”, because it is unclear whether the applicant is trying to claim a capability, i.e., flexibility or deformability, a material, i.e., elastomer, and/or position. The phrase “the link between [...]” renders the claim further unclear whether the applicant is trying to limit that the flexible, elastically deformable link applies only at the link between the movable retention portion of the capillary and the tip body.
Claim 3 is unclear reciting “wherein the flexible link is produced by two flexible zones of reduced thickness, between which a first angular ring sector as well as a second angular ring sector are delimited, the first angular sector being rigidly connected to the movable retention portion of the capillary and the lever while being arranged between the two [...]”, because it is unclear whether the applicant is trying to claim structural connections, a method of producing, method of using, and/or intended use of the assembly.
Claim 1 recites the limitation "the movable retention portion" in L12. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the movable part" in L15. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the tip body" in L15. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the movable retention portion" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the tip body" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the flexible link" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the movable retention portion" in L5. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the tip lever" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the tip body" in L2. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the tip lever" in L3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 13-15 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Although the claim recites a positive displacement sampling device comprising at least one assembly according to claim 1, the body of the claim does not further limit claim 1. Dependent claims are rejected based on further claim dependency. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-15 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Dudek et al. (US 2018/0250667).
Regarding claim 1, Dudek teaches:
1. A positive displacement device assembly, the assembly comprising:
a tip (e.g., 16), the tip being hollow, centred on a longitudinal central axis (e.g., longitudinal axis 26) of the tip, and including an outer surface (see Fig. 1 & ¶ 0045, 0048 for example),
an ejector (e.g., cone ejector 20), the assembly being designed so as to enable an axial ejection travel of the ejector relative to the tip (i.e., the axial clearance 80), between a top resting end position and a bottom ejection end position, the ejector comprising an ejection end (see ¶ 0062 & Figs. 8a-8c for example), wherein
the tip includes a body (e.g., removable low part 14) as well as a movable capillary retention portion (e.g., dual function control member 25) connected to the body by a link (e.g., first end 54, second end 58, axial stop tooth 66), the movable capillary retention portion including an outer surface (see Fig. 1 for example),
the tip also including a lever (e.g., high actuating portion 62) rigidly connected to the movable capillary retention portion (see Fig. 4 for example),
the ejector being equipped with a locking member (e.g., 46) cooperating with the lever (62) such that:
in the top resting end position of the ejector, the locking member (46) is in a locking position (see Fig. 2 for example).
Regarding claims 1–5, 7, 10, 11, and 13, these include elements that have not been positively claimed, see the 112 rejections above. With regard to limitations in claims 1-3, 7 and 11 (e.g., [...] intended to support a capillary of a plunger-capillary system, [...] intended to eject the plunger-capillary system, the assembly being designed so as to enable an axial ejection travel of the ejector relative to the tip, between a top resting end position and a bottom ejection end position, the ejector comprising an ejection end intended to be in axial contact with a capillary end during the ejection travel, [...] actuates a tilting of the lever radially outwards, during the ejection travel of the ejector, the locking member either: allows the tilting of the lever radially outwards, resulting from a tilting of the movable portion radially inwards from its active holding position of the capillary, to a retracted release position of the capillary, or actuates the tilting of the lever radially outwards, resulting in a tilting of the movable portion radially inwards from its active holding position of the capillary, to its retracted release position of the capillary, 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 claim 2-10, 12-15, Dudek teaches:
2. The assembly according to claim 1, wherein, in the tip, the link (54, 58, 66) is capable of being flexible (see ¶ 0052, 0055 for example).
3. The assembly according to claim 2, wherein the tip includes an intermediate ring (e.g., 52) centred on the longitudinal central axis (see Figs. 2 & 6 for example).
4. The assembly according to claim 3, comprises diametrically opposed ends (i.e., opposite ends of 54 and 58; see Fig. 6 & ¶ 0052 for example).
5. The assembly according to claim 3, wherein the tip also includes a fastening plate (i.e., inner wall of 52).
6. The assembly according to claim 2, wherein the tip is made of one piece (see Fig. 1 for example).
7. The assembly according to claim 2, wherein the locking member (46) provided on the ejector is embodied by a radial stop member (see the ring 52 provided with a lip in Figs. 6-7 for example).
8. The assembly according to claim 1, wherein, in the tip, the link (54, 58, 66) between the movable capillary retention portion and the body is a pivot link or a ball joint link (see ¶ 0052 for example).
9. The assembly according to claim 1, wherein the movable capillary retention portion (25) has a general half-cylinder shape (see Fig. 3 for example).
10. The assembly according to claim 1, wherein another part is provided on the outer surface of the tip body (e.g., control screw).
12. The assembly according to claim 1, wherein the movable capillary retention portion (25) and the lever (62) are made of one piece (see Fig. 4 for example).
13. A positive displacement sampling device comprising at least one assembly according to claim 1 (see Abstract, ¶ 0002 & rejection to claim 1 above).
14. The device according to claim 13, wherein the device is a multi-channel (see ¶ 0047 for example), manual, positive displacement sampling pipette (see ¶ 0002 for example).
15. The device according to claim 13, wherein the device is a multi-channel (see ¶ 0047 for example), manual (see ¶ 0002 for example).
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.
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, LUAN VAN can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
Prosecution Insights