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 .
Priority
This application is a 371 of PCT/EP2022/085722, filed 12/13/2022. This application claims benefit to foreign application GERMANY 10 2021 006 144.6, filed 12/13/2021. Claims 1-33 are pending.
Election/Restrictions
Claims 21-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 6/8/2026. Applicant's election with traverse of Group I, claims 1-20 and 33, in the reply filed on 6/8/2026 is acknowledged. The traversal is on the ground that claim 33 should be included in Group I rather than as its own group of Group VII. This is found persuasive because the amendment of claim 1 clearly makes Group I encompass claim 33 of Group VII; hence, claim 33 is properly included in Group I.
The requirement is still deemed proper and is therefore made FINAL.
Thus, claims 21-32 are withdrawn and claims 1-20 and 33 have been examined on the merits.
Information Disclosure Statement
The information disclosure statements submitted on 6/12/2024, 8/8/2024 and 8/9/2024 have been considered by the examiner.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8 recites “inclination (ɣ)of the” which should be “inclination (ɣ) of the”. 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.
Claims 1-20 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.
Claim 1 recites the limitation "the reaction vessels" in line 2. There is insufficient antecedent basis for this limitation in the claim. The claim does not previously recite reaction vessels; hence, the limitation lacks antecedent basis. Claims 2-20 depend from claim 1 and do not resolve the indefiniteness; hence, claims 1-20 are rejected under 35 U.S.C. 112(b) as being indefinite.
Claim 19 recites the limitation "the at least one reaction vessel" in line 3. There is insufficient antecedent basis for this limitation in the claim. Claim 19 depends from claim 1 and neither claim recites an at least one reaction vessel; hence, the limitation lacks antecedent basis. Claim 20 depends from claim 19; hence, claims 19-20 are rejected under 35 U.S.C. 112(b) as being indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “rise from the bottom wall to an edge of the capillary cavity at an angle”, and the claim also recites “in particular at a flat angle, or with a concave curvature” which is the narrower statement of the range/limitation.
Likewise, claim 15 recites the broad recitation “coated in the area surrounding the retention area”, and the claim also recites “in particular complementary to the retention area” which is the narrower statement of the range/limitation.
The claims are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claims 1-7, 13, 16-17 and 33 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Traube et al., US 2010/0112718 (cite A, attached PTO-892; herein “Traube”).
Note: Claims 1-20 and 33 are composition claims, not method claims, drawn to a device in the form of a microtiter plate. Intended use limitations are met if the composition, i.e., device, disclosed by the prior art could be used for the intended use recitations regardless of whether the prior art discloses the intended use or not. Hence, the limitations “a retention area which has such a surface texture and/or shape that due to an adhesive force between the liquid and the retention area and a cohesion within the liquid, the retention area exerts an increased retention effect on the liquid with respect to the surrounding area, so that a predetermined small amount of liquid is retained at or in the retention area when the liquid is removed from the receiving chamber by centrifuging” and “wherein the retention area has a capillary cavity which opens into the receiving chamber, wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action” are met by prior art devices which comprise a capillary cavity which opens into the receiving chamber regardless of whether the prior art teaches centrifuging the device or retaining liquid in the capillary cavity.
Traube teaches 96-well microtiter plates with a single capillary bore at the bottom of each well wherein the capillary bore can have a diameter of 1-400 µm and a length of 50-2000 µm and wherein the capillary bore has a greater pressure than the pressure due to the liquid level in the well; hence, liquid does not leak out of the bore (Fig. 2; [0012], [0016-17]). Thus, the capillary bore in the bottom of each well of the microtiter plates in Traube under the broadest reasonable interpretation (BRI) constitutes a retention area which has such a surface texture and/or shape that due to an adhesive force between the liquid and the retention area and a cohesion within the liquid, the retention area exerts an increased retention effect on the liquid with respect to the surrounding area, so that a predetermined small amount of liquid is retained at or in the retention area when the liquid is removed from the receiving chamber by centrifuging, and constitutes a retention area comprising a capillary cavity which opens into the receiving chamber wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action”. Hence, Traube’s 96-well microtiter plates with a single capillary cavity at the bottom of each well with a diameter of 1-400 µm and a length of 50-2000 µm comprises a reaction vessel unit which comprises a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid, wherein each reaction vessel has a receiving chamber for receiving a liquid and all reaction vessels have a mouth on an upper side of the microtiter plate, wherein each receiving chamber has a retention area which has such a surface texture and/or shape that due to an adhesive force between the liquid and the retention area and a cohesion within the liquid, the retention area exerts an increased retention effect on the liquid with respect to the surrounding area, so that a predetermined small amount of liquid is retained at or in the retention area when the liquid is removed from the receiving chamber by centrifuging, wherein the retention area has a capillary cavity which opens into the receiving chamber, wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action, anticipating claims 1 and 33.
Traube’s 96-well microtiter plates with a single capillary cavity at the bottom of each well with a diameter of 1-400 µm and a length of 50-2000 µm (Fig. 2; [0012], [0016-17]) comprise a receiving chamber bounded by one or more circumferential side walls and a bottom wall and the retention area is formed in or on the bottom wall of the receiving chamber anticipating claim 2.
Traube’s 96-well microtiter plates with a single capillary cavity at the bottom of each well (Fig. 2; [0012], [0016-17]) comprise a retention area with only a single capillary cavity which opens into the receiving chamber, wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action anticipating claim 3.
Traube’s 96-well microtiter plates with a single capillary cavity at the bottom of each well (Fig. 2; [0012], [0016-17]) comprise a capillary cavity which is essentially free of dividing walls, so that a content of the capillary cavity can be completely removed from the capillary cavity by introducing a fluid jet anticipating claim 4.
The capillary cavities with a diameter of 1-400 µm are round in cross-section [0012-17] wherein a wall distance (d) between opposite side walls or wall sections of the capillary cavity is less than 2.0 mm and less than 30% of a wall distance between side walls of the receiving chamber, anticipating claim 5.
The capillary cavities with a diameter of 1-100 µm and a length of 50-2000 µm (Fig. 2; [0012], [0016-17]) have a depth at least 0.5 times a wall distance (d) between opposite side walls or wall sections of the capillary cavity anticipating claim 6.
The side walls of the capillary cavities (Fig. 2; [0012], [0016-17]) are formed vertically anticipating claim 7.
The capillary cavities with a diameter of 1-100 µm and a length of 50-2000 µm (Fig. 2; [0012], [0016-17]) comprise a retention area having a surface structure increasing an adhesion effect on the liquid and a size such that a cohesion of the molecules is formed due to the cohesion within the liquid, that a predetermined amount of the liquid is held at or in the retention area anticipating claim 13.
The reaction vessel unit disclosed by Traube (Fig. 2; [0012], [0016-17]) comprises a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid anticipating claim 16.
The reaction vessel unit disclosed by Traube (Fig. 2; [0012], [0016-17]) comprises reaction vessels have a mouth on an upper side of the microtiter plate anticipating claim 17.
Claims 1-2, 13, 16-17 and 33 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Meyvantsson et al., US 2014/0193900 (cite B, attached PTO-892; herein “Meyvantsson”).
Meyvantsson discloses microtiter plates with retention areas in the bottom of the wells wherein the retention area can comprise microstructures, between 100 nm and 100 µm, which are wells or holes, i.e., capillary cavities ([0024], [0033], [0039-40]; Figs. 1A, 1D, 2I), which comprises a reaction vessel unit comprising a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid, wherein each reaction vessel which has a receiving chamber for receiving a liquid and all reaction vessels have a mouth on an upper side of the microtiter plate, wherein each receiving chamber has a retention area which has such a surface texture and/or shape that due to an adhesive force between the liquid and the retention area and a cohesion within the liquid, the retention area exerts an increased retention effect on the liquid with respect to the surrounding area, so that a predetermined small amount of liquid is retained at or in the retention area when the liquid is removed from the receiving chamber by centrifuging, wherein the retention area has a capillary cavity which opens into the receiving chamber, wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action, wherein the receiving chamber is bounded by one or more circumferential side walls and a bottom wall and the retention area is formed in or on the bottom wall of the receiving chamber anticipating claims 1-2 and 33.
Meyvantsson discloses that the capillary cavities having a width of 100 µm [0024] can have a height, i.e., depth, of 10:1 as compared to the width, i.e., aspect ratio [0041] which comprises a retention area having a surface structure increasing an adhesion effect on the liquid and a size such that a cohesion of the molecules is formed due to the cohesion within the liquid, that a predetermined amount of the liquid is held at or in the retention area anticipating claim 13.
The reaction vessel unit disclosed by Meyvantsson, i.e., an assay vessel contains one or more assay compartments or wells [0033], comprises a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid anticipating claim 16.
The reaction vessel unit disclosed by Meyvantsson ([0024], [0033], [0039-40]; Figs. 1A, 1D, 2I) comprises reaction vessels have a mouth on an upper side of the microtiter plate anticipating claim 17.
Claims 1-6, 8-11, 13-17 and 33 are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Lichtenberg et al., US 2018/0187136 (US Publication cite 4, IDS, 6/12/2024; herein “Lichtenberg”).
Lichtenberg discloses microtiter plates ([0055-56]; Fig. 1) comprising a single pit without dividing walls in the bottom of each well ([0071], [0074], [0122]; Fig. 3C) comprising a reaction vessel unit comprising a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid, wherein each reaction vessel which has a receiving chamber for receiving a liquid and all reaction vessels have a mouth on an upper side of the microtiter plate, wherein each receiving chamber has a retention area which has such a surface texture and/or shape that due to an adhesive force between the liquid and the retention area and a cohesion within the liquid, the retention area exerts an increased retention effect on the liquid with respect to the surrounding area, so that a predetermined small amount of liquid is retained at or in the retention area when the liquid is removed from the receiving chamber by centrifuging, wherein the retention area has a capillary cavity which opens into the receiving chamber, wherein the walls of the capillary cavity are so closely spaced apart that a liquid is retained in the capillary cavity by capillary action, wherein the receiving chamber is bounded by one or more circumferential side walls and a bottom wall and the retention area is formed in or on the bottom wall of the receiving chamber wherein the capillary cavity comprises a single pit without dividing walls in the bottom of each well anticipating claims 1-4 and 33.
Lichtenberg discloses that the pits can have a U-shape [0071], i.e., a round cross-section, and discloses that the lower section, i.e., the pit, in the 96 well version of the plate, can have a length or diameter of at least 0.1 mm and preferably less than 1.5 mm [0058], i.e., the capillary cavity comprises a wall distance (d) less than 2 mm, and (d) is less than 30% of a wall distance between side walls of the receiving chamber (~ 7 mm, [0057]) anticipating claim 5.
Lichtenberg discloses that the lower section, i.e., the capillary cavity, in the 96 well version of the plate, can have a depth of 0.5 mm with a (d) of 1.0 mm anticipating claim 6.
Lichtenberg discloses that the side walls of the capillary cavity can be formed vertically or substantially vertically with a deviation of <5° from the vertical (Figs. 3a-c, e.g., the leftmost embodiment in Fig. 3b) anticipating claim 7.
Lichtenberg discloses that the receiving chamber can be U-shaped wherein an angle of inclination (y) of the bottom wall is <75° (Figs. 3a-c, e.g., the leftmost embodiment in Fig. 3b) anticipating claim 8.
Lichtenberg discloses that the side wall of the receiving chamber widens toward the mouth by >2° from the vertical (Figs. 3a-c, e.g., the leftmost embodiment in Fig. 3b) anticipating claim 9.
Lichtenberg discloses that the bottom wall of the capillary cavity can be continuously curved (Figs. 3a-c, e.g., the leftmost embodiment in Fig. 3c) anticipating claim 10.
Lichtenberg discloses that the walls of the capillary cavity have a widening towards the opening of the capillary cavity (Figs. 3a-c, e.g., the leftmost embodiment in Fig. 3c) anticipating claim 11.
Lichtenberg discloses that their capillary cavities can be dimensioned as claimed in instant claims 5-11, discussed above; thus, the reaction vessel units anticipated by Lichtenberg constitute reaction vessel units wherein the retention area has a surface structure increasing an adhesion effect on the liquid and a size such that a cohesion of the molecules is formed due to the cohesion within the liquid, that a predetermined amount of the liquid is held at or in the retention area anticipating claim 13.
Lichtenberg discloses that the retention area can have a coating of 2-methacryloyloxyethyl phosphorylcholine (MPC) [0048], i.e., a lipophilic coating, anticipating claim 14.
Lichtenberg discloses that the area surrounding the retention area can have a hydrophobic coating [0049] anticipating claim 15.
The reaction vessel unit disclosed by Lichtenberg, i.e., a standard microwell plate [0055-56], comprises a microtiter plate in which a plurality of the reaction vessels is arranged in a predetermined grid anticipating claim 16.
The reaction vessel unit disclosed by Lichtenberg, i.e., a standard microwell plate [0055-56], comprises reaction vessels have a mouth on an upper side of the microtiter plate anticipating claim 17.
Claim Rejections - 35 USC § 103
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 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 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.
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.
Claims 1-6, 8-11, 13-18 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Lichtenberg.
The discussion of Lichtenberg regarding claims 1-6, 8-11, 13-17 and 33 set forth in the rejection above is incorporated herein.
Lichtenberg teaches microtiter plates, i.e., reaction vessel units, comprising wells comprising a capillary cavity wherein the adhesion/retention characteristics of the capillary cavity can be modulated by lipophilic or hydrophobic coatings [0048-49] but does not specifically disclose reaction vessel units wherein the reaction vessel unit has a plurality of reaction vessels, wherein the retention effects of the retention areas of at least two reaction vessels are different; however, a person of ordinary skill in the art at the time of filing would have found it obvious to produce reaction vessel units wherein the reaction vessel unit has a plurality of reaction vessels, wherein the retention effects of the retention areas of at least two reaction vessels are different because having wells with different retention characteristics on the same plate would be efficient for studying microtissue formation [0048-49]; therefore, claim 18 is prima facie obvious.
Claims 1-6, 8-11, 13-20 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Lichtenberg in view of Cantlon-Bruce et al., WO 2021/224408 (Foreign patent cite 6, IDS, 6/12/2024; herein “Cantlon-Bruce”).
The discussion of Lichtenberg regarding claims 1-6, 8-11, 13-18 and 33 set forth in the rejection above is incorporated herein.
Lichtenberg does not teach a collecting device which is arranged opposite an opening of the receiving chamber or openings of the receiving chambers of the at least one reaction vessel and is designed to catch liquid escaping or expelled from the receiving chamber or the receiving chambers wherein the collecting device has one or more compartments; however, a person of ordinary skill in the art at the time of filing would have found it obvious to provide a collecting device comprising a compartment which covers the receiving chambers of Lichtenberg’s microtiter plate because Cantlon-Bruce teaches such a collecting device for collecting the outflow of microtiter plates when they are inverted (Figs. 8A-10C). Hence, a person of ordinary skill in the art at the time of filing would have found it obvious to provide Lichtenberg’s microtiter plate with a collecting device comprising a compartment which covers the receiving chambers of Lichtenberg’s microtiter plate because it would be useful for collecting the liquid escaping or expelled from the receiving chambers when inverted as in a washing procedure; therefore, claims 19-20 are prima facie obvious.
Allowable Subject Matter
Claim 12 is 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 and if the 35 U.S.C. §112(b) issues are resolved.
Conclusion
No claims are allowed. Claim 12 comprises allowable subject matter as indicated above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Trent R Clarke whose telephone number is (571)272-2904. The examiner can normally be reached M-F 10-7 MST.
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/TRENT R CLARKE/ Examiner, Art Unit 1651
/DAVID W BERKE-SCHLESSEL/ Primary Examiner, Art Unit 1651
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