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 .
Response to Amendment
The submission entered December 30, 2025 in response to an Office Action mailed October 1, 2025 is acknowledged.
Claims 1-30 are pending. Claim(s) 1, 6, 23 is/are currently amended. Claim(s) 24-30 is/are newly presented.
The rejection(s) of claim(s) 23 under 35 U.S.C. 112 as presented in the Office Action listed above are hereby withdrawn.
Response to Arguments
Applicant's arguments filed December 30, 2025 have been fully considered.
Applicant’s amendment to claim 1 is considered to overcome the previously applied prior art rejections.
Regarding Claim(s) 24, applicant’s argument that the prior art fails to disclose a thickness of the wire fingers is considered persuasive. However, the claim is considered to fall under the double patenting doctrine, as described below.
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 24-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-24 of U.S. Patent No. 12,084,294. Although the claims at issue are not identical, they are not patentably distinct from each other because the subject matter of the instant claims is fully encompassed by the subject matter of the patented claims.
Instant Application (claim 1)
USPN 12,084,294
A carrier for transporting a sample receptacle, the carrier comprising
(Claim 1), “A carrier for transporting a sample receptacle, the carrier comprising:”
a base having a top end defining a recess for receiving a bottom end of the sample receptacle;
(Claim 1), “a base having a top end defining a recess for receiving a bottom end of the sample receptacle;”
an annular support coupled to the top end of the base and circumscribing the recess;
(Claim 1), “an annular support coupled to the top end of the base and circumscribing the recess;”
and a plurality of resilient wire fingers affixed to and extending upward from the annular support
(Claim 1), “and a plurality of resilient wire fingers affixed to and extending upward from the annular support,”
the plurality of resilient wire fingers being configured to (i) retain the bottom end of the sample receptacle within the recess of the base
(Claim 1), “the plurality of resilient wire fingers being configured to (i) retain the bottom end of the sample receptacle within the recess of the base”
and (ii) maintain the sample receptacle in a substantially upright orientation,
(Claim 1), “and (ii) maintain the sample receptacle in a substantially upright orientation,”
each resilient wire finger comprising a first segment adjacent to the base,
(Claim 1), “each resilient wire finger comprising a first segment adjacent to the base,”
a linear second segment joined to the first segment,
(Claim 1), “a linear second segment joined to the first segment,”
and a linear third segment joined to the second linear segment,
(Claim 1), “a linear third segment joined to the second linear segment,”
wherein each of the plurality of resilient wire fingers is formed from stainless steel having a gauge in the range of about 0.6 mm to about 1.0 mm,
(Claim 24), “each of the plurality of resilient wire fingers is formed from stainless steel having a gauge in a range of about 0.6 mm to about 1.0 mm”
wherein the first and second segments of each resilient wire finger are joined by a first angled portion of the resilient wire finger,
(Claim 1), “wherein the first and second segments of each resilient wire finger are joined by a first angled portion of the resilient wire finger,”
the first angled portion orienting the second segment toward a vertical axis VA of the carrier,
(Claim 1), “the first angled portion orienting the second segment toward a vertical axis VA of the carrier,”
wherein the second and third segments of each resilient wire finger are joined by a second angled portion of the resilient wire finger,
(Claim 1), “wherein the second and third segments of each resilient wire finger are joined by a second angled portion of the resilient wire finger,”
the second angled portion orienting the third segment away from the vertical axis VA of the carrier,
(Claim 1), “the second angled portion orienting the third segment away from the vertical axis VA of the carrier,”
wherein the third segment length is greater than the second segment length,
(Claim 7), “wherein the third segment length is greater than the second segment length”
wherein the third segment of each resilient wire finger is configured to contact the bottom end of the receptacle as the receptacle is inserted into the carrier,
(Claim 1), “wherein the third segment of each resilient wire finger is configured to contact the bottom end of the receptacle as the receptacle is inserted into the carrier,”
and wherein the third segment and the vertical axis VA of the carrier form an angle α between 40° and 50°
(Claim 1), “wherein the third segment and the vertical axis VA of the carrier form an angle α between 40° and 50°,”
Instant application (claim 2)
USPN 12,084,294
each resilient wire finger further comprises a fourth segment,
(Claim 1), “and a fourth segment joined to the third segment”
wherein the third and fourth segments of each resilient wire finger are joined by a third angled portion of the resilient wire finger,
(Claim 1), “wherein the third and fourth segments of each resilient wire finger are joined by a third angled portion of the resilient wire finger”
and wherein the third angled portion does not orient the fourth segment toward the vertical axis VA of the carrier.
(Claim 1), “such that the fourth segment is not oriented toward the vertical axis VA of the carrier”
Instant Application (Claim 25)
USPN 12,084,294
wherein each resilient wire finger further comprises a fourth segment
(Claim 1), “each resilient wire finger comprising…a fourth segment joined to the third segment”
the third and fourth segments of each resilient wire finger are joined by a third angled portion of the resilient wire finger
(Claim 1), “wherein the third and fourth segments of each resilient wire finger are joined by a third angled portion of the resilient wire finger”
and wherein the third angled portion does not orient the fourth segment toward the vertical axis VA of the carrier
(Claim 1), “such that the fourth segment is not oriented toward the vertical axis VA of the carrier”
Instant Application (Claim 26)
USPN 12,084,294
the fourth segment is a linear segment
(Claim 2), “the fourth segment is a linear segment”
extending downward from the third angled portion of the resilient wire finger
(Claim 3), “the fourth segment extends downward from the third angled portion of the resilient wire finger.”
and generally parallel to the vertical axis VA of the carrier.
(Claim 4), “the fourth segment is generally parallel to the vertical axis VA of the carrier”
Instant Application (Claim 27)
the fourth segment has a fourth segment length, the third segment has a third segment length that is greater than the fourth length
(Claim 5), “the fourth segment has a fourth segment length, and the third segment has a third segment length that is greater than the fourth segment length”
and the second segment has a second segment length that is greater than the fourth segment length
(Claim 6), “the second segment has a second segment length that is greater than the fourth segment length.”
Instant Application (Claim 28)
USPN 12,084,294
the third segment length is at least 20% greater than the second segment length.
(Claim 8), “the third segment length is at least 20% greater than the second segment length”
Instant Application (Claim 29)
USPN 12,084,294
the base comprises a plastic cylinder and contains a magnet, and wherein the annular support comprises a metal.
(Claim 20), “the base comprises a plastic cylinder, and wherein the annular support comprises a metal”
Allowable Subject Matter
Claim 30 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.
Claims 1-23 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art fails to anticipate or fairly suggest a plurality of resilient wire fingers affixed to and extending upward from a top surface of the annular support, combined with the rest of the claim language. The prior art, in carriers that use resilient wire fingers, shows that the fingers are usually bound by the interior surface of an annular support rather than extending upward from the upper surface of the annular support.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 WILLIAM RAY HARP whose telephone number is (571)270-5386. The examiner can normally be reached Monday-Friday, 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, MICHAEL MCCULLOUGH can be reached at (571) 272-7805. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM R HARP/Primary Examiner, Art Unit 3653
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