DETAILED CORRESPONDENCE
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
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9, drawn to a method of producing a microplate.
Group II, claim(s) 10-19, drawn to a microplate.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The common technical feature in all groups is a thermally conductive microplate from thermoplastic material, comprising a microplate body having at least 96 wells arranged in the microplate body, wherein the microplate body has a flat microplate bottom and each well has at least one well wall and a planar well bottom having a bottom thickness of not more than 1000 μm which is aligned in a well bottom plane common to all well bottoms. This element cannot be a special technical feature under PCT Rule 13.2 because the element is shown in Pitzek et al (US 20160243734; hereinafter “Pitzek”; already of record) and Turner, B (US 20070059219; hereinafter “Turner”). Pitzek and Turner teach a thermally conductive microplate from thermoplastic material, comprising a microplate body having at least 96 wells arranged in the microplate body, wherein the microplate body has a flat microplate bottom and each well has at least one well wall and a planar well bottom having a bottom thickness of not more than 1000 μm which is aligned in a well bottom plane common to all well bottoms (Pitzek teaches an injection and compression process to make a flat bottomed multiwell plate that has a thickness b less than 1 mm (42, 44] and is flat [29, 32, 34, 67, 77-100]; Fig. 1-12. Pitzek teaches a frame; Fig. 12. Pitzek teaches a 96 well pate; [25]. Pitzek teaches thermoplastic materials; [52-64]. Turner teaches the microplate; Fig. 1-5, [69-70, 79, 82-84, 86, 93-94]. Turner teaches 384 well format; [57], Fig. 2a. Turner teaches each well has a wall, and a planar and flat bottom portion; Fig. 2c. Turner teaches that the bottom can have the same thickness as the thin wall, which is 0.0025 - 0.0065 in, which is .06-.17 mm; [83, 84], 86. Turner teaches polypropylene; [79]).
During a telephone conversation with Michael VanEngelen on 8/3/26 a provisional election was made without traverse to prosecute the invention of group I, claims 1-9. Affirmation of this election must be made by applicant in replying to this Office action. Claims 10-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
5. Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/4/24 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. The examiner notes that many ASNI standards are referenced, and also include various hyperlinks (see pages 1, 3, 4) where none of these have been included in the IDS. The examiner also notes references on page 4 of the instant specification that are not on the IDS. If applicants are attempting to reference various standards, then the standards should be included in a submission with an IDS.
Claim Status
Claims 1-19 are pending with claims 1-9 being examined and claims 10-19 deemed withdrawn.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. The examiner notes that many ASNI standards are referenced, and also include various hyperlinks (see pages 1, 3, 4, and specifically page 3 lines 15-19). Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
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 4 is 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 pre-AIA the applicant regards as the invention.
As to claim 4, it is unclear whether pressure or force is attempting to be claimed. The claim recites that the pressure is in kN. However, this is contradictory. Although force can be in kN, pressure must be in force/area. Pressure is often described in bar, or N/m^2, or Pa. The specification does not appear to resolve the issue. Therefore, it is unclear whether force or pressure is attempting to be recited, and the disclosure does not make it clear what applicants’ intent is. For purposes of compact prosecution, the claims will be interpreted as best understood.
Appropriate correction and/or clarification is required.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 2, 3, 5, 6, 7, 8, 9 are rejected under 35 U.S.C. 103 as being unpatentable over Turner, B (US 20070059219; hereinafter “Turner”) in view of Yang, T (US 20110297306; hereinafter “Yang’).
As to claim 1, Turner teaches a method of producing a thermally conductive microplate from thermoplastic material (Turner; Fig. 1-5, [69-70, 79, 82-84, 86, 93-94]), comprising a microplate body having at least 96 wells arranged in the microplate body (Turner teaches 384 well format; [57], Fig. 2a), wherein the microplate body has a flat microplate bottom and each well has at least one well wall and a planar well bottom having a bottom thickness of not more than 1000 μm which is aligned in a well bottom plane common to all well bottoms (Turner teaches each well has a wall, and a planar and flat bottom portion; Fig. 2c. Turner teaches that the bottom can have the same thickness as the thin wall, which is 0.0025 - 0.0065 in, which is .06-.17 mm; [83, 84], 86), wherein the method comprises: a) providing liquefied thermoplastic material (Turner teaches polypropylene; [79]); b) performing an injection compression molding step in an injection compression molding machine, comprising an injection unit and an embossing die suitable for forming the microplate body, with introduction of a first portion of the liquefied thermoplastic material through the injection unit into the at least partly open embossing die under a first injection pressure, closing the embossing die with exertion of a closing pressure on the thermoplastic material; c) then performing an injection molding step with introduction of a second portion of the liquefied thermoplastic material through the injection unit into the closed embossing die under a second injection pressure; and d) obtaining the microplate body (Turner teaches injection compression molding, where there is a first stage of fast injection and then compressing the pins/mold/embossing die while more slowly injecting the polymeric material; [69, 93]. Turner teaches the injection molding machine; [49, 58, 73]. Turner teaches the mold/embossing; [68, 70, 72, 85, 86, 89, 90]).
Turner does not specifically teach that the injection unit has a conveying screw. However, Yang teaches the analogous art of an injection unit for molding polymers where the injection unit includes a conveying screw (Yang; [52, 79], Fig. 6). It would have been obvious to have modified the injection compression molding device and method of Turner to have used a screw-based injection device as in Yang because Yang teaches that injection units often include screw feeds in order to apply pressure to the polymeric material to force the material into the mold (Yang; [52]).
As to claims 2-3, Turner teaches the method as claimed in claim 1, wherein the first injection pressure is higher than the second injection pressure (Turner teaches that the first stage is a faster process than the second stage, whereby this faster injection would mean that the pressure is higher; [93]).
Turner does not specifically teach wherein the first injection pressure is 700 to 1100 bar or wherein the second injection pressure is 200 to 700 bar. However, Yang discloses that it is common to use 5,000 psi to 15,000 psi (344 bar-1034 bar) as typical pressures and that the pressures depend on the polymer being used, the design of the container, and the molding machine (Yang; [79]). Therefore, it is evident that Yang recognizes that the pressure is a result effective variable since the pressure can vary on the polymer being used, the design of the container, and the molding machine (Yang; [79]), and since Yang teaches that pressures from 700-1100 bar and 200-700 bar are commonly used. It would have been obvious to have modified and optimized the first injection pressure that is higher and the second injection pressure that is lower of Turner to have been around 1034 bar and 344 bar, respectively, as in Yang because Yang teaches that these pressures are commonly used (Yang; [79]). In the case where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” a prima facie case of obviousness exits (see MPEP 2144.05).
As to claim 5, Turner teaches the method as claimed in claim 1, wherein the thermoplastic material is stable at at least 120° C (Turner teaches polypropylene; [79]. The instant specification teaches that the preferred materials that achieve this property include polypropylene; see page 10 lines 15-19 of the instant specification).
As to claim 6, Turner teaches the method as claimed in claim 1, wherein the thermoplastic material is polypropylene or cycloolefin copolymer (COC) (Turner teaches polypropylene; [79]).
As to claim 7, Turner teaches the method as claimed in claim 1, wherein the thermoplastic material does not contain any thermal conductivity-enhancing medium (Turner teaches polypropylene; [79]. Turner does not teach the additiona of any other thermal conductivity enhancing medium and therefore the polypropylene would not include any additional material).
As to claim 8, Turner teaches the method as claimed in claim 1, wherein the microplate body is arranged in a frame carrier (In as much as claimed, Turner teaches that the microplate body that is defined by wells also includes a frame; Fig. 1-5).
As to claim 9, Turner teaches the method as claimed in claim 1, wherein a mass of the first portion of the liquefied thermoplastic material and a mass of the second portion of the liquefied thermoplastic material is injected (Turner teaches that the first portion is initially filled in a fast first stage whereby much of the volume of material is provided and where the second stage that involves slower injecting would pass the remaining material; [69, 93]). Turner not specifically teach the mass ratio of the first portion to the second portion is from 0.5 to 2.5. However, it would have been obvious to one of ordinary skill in the art to have adjusted the mass ratio of the first injection portion to the second injection portion of Turner to be 2 such that the majority of the material was injected in the first portion and that the remaining material was injected in the second portion because Turner teaches the first portion would be greater than the second portion and because one of ordinary skill in the art would have found this ratio obvious to provide more material such that the ratio was above 1, but not so much material such that the mold overfilled thereby ensuring material isn’t wasted and that the mold doesn’t become too full of excess material.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Turner, B (US 20070059219; hereinafter “Turner”) in view of Yang, T (US 20110297306; hereinafter “Yang’) in view of Njoo et al (US 20180229413; hereinafter “Njoo).
As to claim 4, Turner teaches the method as claimed in claim 1, with a mold closure pressure (see above).
Turner does not specifically teach the closure pressure is 600 to 1000 kN. However, Njoo teaches the analogous art of a compressing mold that closes at 1000 kN (Njoo; [52]). It would have been obvious to one of ordinary skill in the art to have modified the closing pressure of Turner to have been 1000 kN as in Njoo because Njoo teaches that this closure force helps move the molds together to compress the molten material in the mold (Njoo; [52]).
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to applicant's disclosure include;
Pitzek et al (US 20160243734; hereinafter “Pitzek”; already of record) teaches an injection and compression process to make a flat bottomed multiwell plate that has a thickness b less than 1 mm (42, 44] and is flat [29, 32, 34, 67, 77-100]; Fig. 1-12. Pitzek teaches a frame; Fig. 12. Pitzek teaches a 96 well pate; [25]. Pitzek teaches a frame; Fig. 12. Pitzek teaches a 96 well pate; [25]. Pitzek teaches thermoplastic materials; [52-64].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN R WHATLEY whose telephone number is (571) 272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
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, 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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/Benjamin R Whatley/Primary Examiner, Art Unit 1798
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