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 .
This office action is in response to the reply filed on 4/14/2026, wherein claims 1-3, 8-13 and 15-20 were amended; claims 4 and 14 were canceled; and claims 21-22 were added. Claims 1-3, 5-13 and 15-22 are pending.
Claim Objections
Claim 11 is objected to because of the following informalities: It appears that claim 11 should depend from claim 10, not claim 1, due to the preamble defining the marker tip holder box system. Appropriate correction is required.
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 1-3, 5, 7-9 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho (WO2020/130516).
Regarding claim 1, Cho discloses a container (100) capable of retaining a plurality of objects, comprising: a holder pad (at 20 in Fig. 2) having a plurality of holders (holders 21 – See Fig. 6), wherein each holder has an opening (at 21 in Fig. 7 – See Fig. 5 labeled below) capable of receiving an object of a plurality of objects, each holder of the plurality of holders further comprising: a flexible leaflet (element 22 in Fig. 7 is disclosed as being “bent to one side by an external force and has a property to be restored to the original state when the external force is removed” – See Page 5, paragraph 3 of the English Translation) that surrounds the opening in the holder (See Fig. 7 wherein element 22 surrounds the opening 21), wherein the flexible leaflet has an interference shape that also narrows in diameter as it approaches an arrester (See Fig. 8 wherein the shape of 22 narrows as it approaches bottom wall 13); and an arrester (wall at 13 in Fig. 8), located below the flexible leaflet (as shown in Fig. 8), in which a retained object of a plurality of objects is capable of being held against the arrester (e.g. if the length of the object extends between the top of 20 and the upper surface of 13 in Fig. 8), wherein the flexible leaflet can hold a retained object in two states, a first state that holds a retained object of the plurality of objects with sufficient firmness to retain the retained object of the plurality of objects in the holder and in contact with the top surface of the arrester (the state when an object having a diameter larger than the space between the bottom portions of element 22 in Fig. 7 is placed between elements 22), and a second state in which the interference shape of the flexible leaflet interferes with an outer housing of the retained object of the plurality of objects in the holder to form a flexure that enables removal of the retained object of the plurality of objects from the holder pad (e.g. the state when only one of the elements 22 is flexed).
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Regarding the intended use of the claimed invention “configured to retain a plurality of objects”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the plurality of objects are not positively recited in the claim, the prior art must only be capable of retaining a plurality of objects (of any type/size/shape) in the manner recited in the claim.
Regarding claim 2, the arrestor of Cho is shaped (i.e. the flat upper surface of 13) capable of holding the retained object in an upright position, and wherein the device of Cho is capable of retaining an object having a forward end and a rear end having, wherein being held in the upright position places the rear end of the object of the plurality of objects residing closer to the opening in the holder than the forward end.
Regarding claim 3, the opening in the holder of Cho is capable of receiving an external tool, wherein the flexible leaflet reception of the external tool is capable of engaging the second state that forms the flexure that enables removal of the retained object of the plurality of objects from the holder pad.
Regarding claim 5, Cho discloses each holder of the plurality of holders further comprises a stop wall (wall portion to the right of each leaflet – See Fig. 5 labeled above) that can prevent the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet.
Regarding claim 7, Cho discloses each holder of the plurality of holders holds only one retained object.
Regarding claim 8, Cho discloses a drawer (outer portion 10), wherein the holder pad resides in the drawer of the container (See Figs. 1 and 3 wherein element 20 is housed within element 10).
Regarding claim 9, Cho discloses the drawer seals sufficiently tightly (at edges 15 in Fig. 3) to prevent dust from entering the holder pad when the drawer is closed.
Regarding claim 21, Cho discloses a protective cover (element at 30 in Figs. 1, 2 and 5 is considered a protective cover since it covers at least a portion of the device and thus provides at least some degree of protection to at least a portion of the device) into which a portion of the drawer fits (See Fig. 1 wherein a portion of the drawer fits between the two inward facing pins 31).
Claims 1-3, 5-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maruyama (US 2002/0108917).
Regarding claim 1, Maruyama discloses a container (container 10 combined with elements 30 disposed within circular holes 14) capable of retaining a plurality of objects, comprising: a holder pad (at 12) having a plurality of holders (holding elements 30 disposed within six circular holes 14 along the right side of Fig. 1), wherein each holder has an opening (opening extending through the center of 30 when 30 is disposed within holes 14) capable of receiving an object of a plurality of objects, each holder of the plurality of holders further comprising: a flexible leaflet (at 36 – shown in Figs. 3-5, flexibility described in [0017]-[0018]) that surrounds the opening in the holder, wherein the flexible leaflet has an interference shape that also narrows in diameter as it approaches an arrester (bottom wall at 20 in Fig. 1); and an arrester (bottom wall at 20/22 in Fig. 1), located below the flexible leaflet, in which a retained object of the plurality of objects is capable of being held against the arrester, wherein the flexible leaflet is capable of holding a retained object in two states, a first state that holds the retained object of the plurality of objects with sufficient firmness to retain the retained object of the plurality of objects in the holder (the state when an object having a diameter larger than the space between the bottom portions of element 36 is placed between elements 36), and a second state in which the interference shape of the flexible leaflet interferes with an outer housing of the retained object of the plurality of objects in the holder to form a flexure that enables removal of the retained object of the plurality of objects from the holder pad (e.g. the state when only one of the elements 36 is flexed, depending on the specific type of outer housing placed therein).
Regarding the intended use of the claimed invention “configured to retain a plurality of objects”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the plurality of objects are not positively recited in the claim, the prior art must only be capable of retaining a plurality of objects (of any type/size/shape) in the manner recited in the claim.
Regarding claim 2, the arrestor of Maruyama is shaped (i.e. the flat upper surface of 20/22) capable of holding the retained object in an upright position, and wherein the device of Cho is capable of retaining an object having a forward end and a rear end having, wherein being held in the upright position places the rear end of the object of the plurality of objects residing closer to the opening in the holder than the forward end.
Regarding claim 3, the opening in the holder of Maruyama is capable of receiving an external tool, wherein the flexible leaflet reception of the external tool is capable of engaging the second state that forms the flexure that enables removal of the retained object of the plurality of objects from the holder pad.
Regarding claim 5, Maruyama discloses each holder of the plurality of holders further comprises a stop wall (wall at 24 in Fig. 1) that can prevent the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet.
Regarding claim 6, Maruyama discloses the flexible leaflet is comprised of a flexible plastic material ([0017]).
Regarding claim 7, Maruyama discloses each holder of the plurality of holders holds only one retained object.
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.
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Cho (WO2020/130516), as applied to claim 1 above, in view of Pawlowski (US 2014/0027332). As described above, Cho discloses the claimed invention except for the specific material of the leaflets. However, Pawlowski teaches a container (at 1 in Fig. 1a) comprising a plurality of holders (at 39 in Fig. 1a) having flexible leaflets (at 137 in Fig. 1a), wherein the flexible leaflets are formed from plastic material for the purpose of sufficiently engaging articles held within the holders (See [0051] and [0053]-[0054]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the leaflets of Cho to be formed from a plastic material as taught by Pawlowski in order to ensure proper engagement with items held therein. Furthermore, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 4/14/2026 have been fully considered but they are not persuasive.
Applicant argues that the Examiner states at page 5 that Cho teaches a container capable of retaining a plurality of objects in which an arrester is located below a flexible leaflet and that the flexible leaflet has two states. Cho does not disclose the claim limitations regarding the two states. Cho merely discloses a plurality of tandem pieces that press against the circumference of an object. The plurality of tandem pieces are connected by a base disposed on the bottom of an insertion hole, wherein the plurality of tandem pieces contract and grab an object when a force is applied onto the base. Further, the Examiner has interpreted the claimed arrester to correspond to wall 13 in Cho. The wall 13 in Cho is merely a side plate of the body 10. The holder portion 20 is a separate object that attaches to the body 10. As can be observed in Cho's FIG. 5, there is a gap between the holder 20 and the wall 13. The wall 13 is unable to be in contact with the retained object, let alone retain the retained object. Therefore, Cho does not disclose an arrester to retain a retained object as disclosed in Claim 1. Further, the plurality of tandem pieces in Cho do not disclose a second state as recited in the Applicant's Claim The plurality of tandem pieces in Cho disconnect from the object inserted in the holder portion when a user extracts the object, as force is no longer exerted on the base connecting the tandem pieces, and the tandem pieces revert to the original position. Therefore, the tandem pieces do not interfere with an outer housing of the object in the meaning of Claim 1 where the interference shape of the flexible leaflet interferes with an outer housing of the retained object.
Regarding Applicant’s argument, first off, regarding the intended use of the claimed invention “configured to retain a plurality of objects”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the plurality of objects are not positively recited in the claim, the prior art must only be capable of retaining a plurality of objects (of any type/size/shape) in the manner recited in the claim. Therefore, since the objects are not positively recited in the claims, Cho is fully capable of holding objects in a first state that holds the retained object of the plurality of objects with sufficient firmness to retain the retained object of the plurality of objects in the holder (e.g. the state when an object having a diameter larger than the space between the bottom portions of multiple elements 22 is placed between elements 22), and a second state in which the interference shape of the flexible leaflet interferes with an outer housing of the retained object of the plurality of objects in the holder to form a flexure that enables removal of the retained object of the plurality of objects from the holder pad (e.g. the state when only one of the elements 36 is flexed, depending on the specific type of outer housing placed therein). Furthermore, a retained object of is capable of being held against the arrester (upper surface of 13) of Cho, e.g. if the object’s length when held within the opening is long enough to come in contact with the arrester to support a bottom end of the object thereon.
Applicant argues that Examiner asserts that Cho discloses each holder of the plurality of holders further comprises a stop wall that prevents the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet. The Applicant respectfully disagrees. The "wall" interpreted by the Examiner as the stop wall in the Office Action is the lower plate 12 forming the main body portion 10 in Cho. Therefore, this wall appears to only form the structure of the main body portion. Furthermore, even if the lower plate 12 were to be interpreted as the stop wall, it would not be able to perform the function of the stop wall recited in the Applicant's Claim 5. Among other things, when an object is inserted into the opening in Cho, the tandem pieces contract inwards instead of outwards to grab the object. Prior to an object being inserted into the opening, the tandem pieces are already in their equilibrium position. This signifies that when an object is retracted from the opening and the tandem pieces release the object (and enter an empty state), they can only revert back to their equilibrium position and do not risk extending further than said position.
Regarding Applicant’s argument, the stop walls (wall portion to the right of each leaflet – See Fig. 5 labeled above) of Cho can prevent the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet. Depending on the specific flexibility of the leaflets, they are capable of flexing to a point of contacting the stop walls in the manner recited in the claim. With respect to the art rejections, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Applicant argues that Examiner states at page 8 that Maruyama discloses a holder pad having a plurality of holders wherein each holder has an opening and further comprises a flexible leaflet. The Applicant respectfully disagrees. The holder disclosed by Maruyama comprises a clamp which is constructed to be inserted to make a pressed fit in the opening of the top plate and removed if not needed any longer (see, Maruyama paragraph [0017]). In contrast, the Applicant's claimed holder includes the leaflets as an integral part of the holder instead of a separate clamp. Among other things, this ensures structural integrity and reliability of the holder. Moreover, Maruyama's "clamps" do not disclose a second state as recited in Claim 1. Maruyama's clamps comprise extending fingers that configured to hold test tubes in position. Before a test tube is inserted into the opening, the fingers are in an equilibrium position (an empty state). When a test tube is inserted, the fingers expand to make space for the test tube and press against a small portion of the test tube to hold it in position. When a test tube is removed from the holder, the fingers merely return to their equilibrium position (the empty state), instead of transitioning to a second state.
Regarding Applicant’s argument, first off, regarding the intended use of the claimed invention “configured to retain a plurality of objects”, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. If the prior art structure is capable of performing the intended use, then it meets the claim. Ex parte Masham, 2 USPQ2d 1647 (1987). Since the plurality of objects are not positively recited in the claim, the prior art must only be capable of retaining a plurality of objects (of any type/size/shape) in the manner recited in the claim. Therefore, since the objects are not positively recited in the claims, Murayama is fully capable of holding objects in a first state that holds the retained object of the plurality of objects with sufficient firmness to retain the retained object of the plurality of objects in the holder (e.g. the state when an object having a diameter larger than the space between the bottom portions of multiple elements 36 is placed between elements 36), and a second state in which the interference shape of the flexible leaflet interferes with an outer housing of the retained object of the plurality of objects in the holder to form a flexure that enables removal of the retained object of the plurality of objects from the holder pad (e.g. the state when only one of the elements 36 is flexed, depending on the specific type of outer housing placed therein). Furthermore, a retained object of is capable of being held against the arrester (upper surface of 20/22) of Maruyama e.g. if the object’s length when held within the opening is long enough to come in contact with the arrester to support a bottom end of the object thereon.
Applicant argues that with respect to Claim 5, the Examiner asserts that Maruyama discloses each holder of the plurality of holders further comprises a stop wall that can prevent the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet. The Applicant respectfully disagrees. Maruyama's flange 24 that the Examiner has interpreted as a stop wall in the Office Action is a part of the rack 10. Therefore, this wall is intended to only form the structure of the rack 10. Furthermore, even if the flange 24 were to be interpreted as the stop wall, it would not be able to perform the function of the stop wall according to the Applicant's invention. The flange 24 is only disposed on the outer perimeter of the rack 10, which implies that the clamps located in a central portion of the top plate 12, have no means to extend such that they interact with the flange 24. This further implies, that the condition for each holder of the plurality of holders to comprise a stop wall as recited in Claim 5 is not fulfilled as it is clearly visible from Figure 1 in Maruyama the space between two opening comprises no walls. Furthermore, when a test tube is retracted from the opening, the fingers revert back to their equilibrium position and do not risk extending such as to interact with a stop wall.
Regarding Applicant’s argument, the stop wall portions (wall at 24 in Fig. 1) of Murayama can prevent the flexible leaflet from further outward extension when the flexure is formed in the flexible leaflet. Depending on the specific flexibility of the leaflets, they are capable of flexing to a point of contacting the stop walls in the manner recited in the claim. With respect to the art rejections, in accordance with MPEP 2111.01, during examination, the claims must be interpreted as broadly as their terms reasonably allow. In re American Academy of Science Tech Center, 367 F.3d 1359, 70 USPQ2D 1827, 1834 (Fed. Cir. 2004).
Allowable Subject Matter
Claims 10-13, 15-20 and 22 are allowed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEVEN A REYNOLDS whose telephone number is (571)272-9959. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEVEN A. REYNOLDS/Primary Examiner, Art Unit 3735
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