DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Peterson, et al. application filed with the Office on 5 December 2024.
Claims 1-20 are currently pending, and claims 1-10 have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
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) 1-10, drawn to a cartridge for capillary electrophoresis.
Group II, claim(s) 11-20, drawn to a system for supplying liquid to an electrophoresis cartridge.
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:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature.
During a telephone conversation with Mr. Daniel Bruzzone, Attorney for Applicant, on 29 June 2026, and a provisional election was made on 30 June 2026, without traverse to prosecute the invention of Group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Priority
The instant application is a US National Stage Application of an International Patent Application, PCT/IB2023/055894, filed on 7 June 2023, which claims priority to a US Provisional Patent Application, 63/350,899, filed on 10 June 2022. Thus, the earliest effective filing date of the present application is 10 June 2022.
Information Disclosure Statement
The information disclosure statements (IDSs) submitted regarding the present application filed on 17 January 2025 and 12 February 2025, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDSs have been considered by the Examiner.
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.
Claims 1-3 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over a US Patent to Dill, et al. (US 5,164,064; hereinafter, “Dill”).
Regarding claim 1, Dill discloses a cartridge for capillary electrophoresis (Col. 2, lines 28-30: “The cartridge 11 of this example is shown in FIGS. 1 and 2, which show the cartridge in its retracted and extended positions, respectively.”) comprising:
a housing (Col. 2, lines 30-34: “The two parts of the cartridge are a cooling block 12 and a housing 13, both generally rectangular in shape and having thicknesses (perpendicular to the plane of the Figures) which are considerably less than their heights and widths.”) comprising:
a base at least partially defining a cavity defining a cavity volume (Col. 4, lines 27-30: “The interior of the cooling block is molded to form a coolant flow channel 60, which is a narrow channel of substantially constant width …”);
a cover plate secured to the base (channel is enclosed, therefore an inherent cover plate exist),
wherein the cover plate defines a window (Col. 4, lines 44-47: “The cooling block contains a matching window on its other face (not shown in this view), the windows being aligned to form a light path which passes through the capillary.”); and
a volume displacement structure projecting from at least one of the base and the cover plate and into the cavity when the cover plate is secured to the base (molded coolant flow channel 60), wherein the volume displacement structure and cavity together at least partially define a coolant liquid flow path having a coolant liquid flow path volume less than the cavity volume (Col. 4, lines 35-38: “It will be noted that the coolant flow channel 60 is shaped to direct the coolant flow around the loop 62 with little or no dead volume in the flow path.”).
Dill teaches a single capillary, and does not teach a plurality of capillaries disposed in the coolant liquid flow path, wherein each of the plurality of capillaries comprises a capillary inlet and a capillary outlet projecting from the base.
However, it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP 2144.VI B
Regarding claim 2, Dill teaches a looped portion 62, which is curved.
Regarding claim 3, Dill teaches wherein the volume displacement structures projects from the cover and is disposed adjacent the outer curved wall (molded coolant flow channel 60).
Regarding claim 7, Dill teaches coolant liquid inlet and outlet (20, 21).
Regarding claim 8, Dill teaches the coolant liquid flow path has a constant height (implicit when viewing 60).
Regarding claim 9, the taught coolant liquid flow path includes an inherent width substantially orthogonal to the height. Additionally, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. MPEP 2144.04 IV A
Regarding claim 10, Dill teaches at least one detent projecting from the base (any of elements 18, 19, 20, or 21).
Allowable Subject Matter
Claims 4-6 are 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.
The following is a statement of reasons for the indication of allowable subject matter: Dill is the closest prior art reference to the instant claims. However, Dill does not anticipate or render obvious a volume displacement structure projecting from the cover and is spaced apart from the outer curved wall (as required by instant claim 4) or, a thermally-conductive chip (as required by instant claims 5 and 6).
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US Patent 6,799,629 B1 to Cong, et al., which discloses an apparatus for cooling a bundle of capillary tubes.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
Prosecution Insights