FINAL OFFICE ACTION in CON
This application has been assigned or remains assigned to Technology Center 1700, Art Unit 1774 and the following will apply for this application:
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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
Acknowledgment is made of applicant's claim for domestic priority under 35 U.S.C. § 119(e).
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 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.
Claims 1 and 5-16 are rejected under 35 U.S.C. 103 as being unpatentable over PIRAMOON (US 8323169 B2) in view of PIRAMOON (US 5601522).
The patent to PIRAMOON ‘169 discloses the recited fixed angle centrifuge rotor as seen in Figures 1-3A comprising a rotor body 10; the rotor body having a tapered external side surface and having an upper surface and a plurality of tubular cavities extending from the upper surface to respective bottom walls, each cavity being configured to receive a sample container therein; and a pressure plate assembly 54, 56 or 54, 56, 60, 62, 64 operatively coupled to the bottom walls and configured to transfer torque to the bottom walls, wherein the pressure plate is configured to be/capable of being directly coupled to a rotor hub and to receive torque directly from the rotor hub; wherein the pressure plate includes an upper surface and a plurality of depressions 56 spaced apart from each other on the upper surface and each including a bottom surface, and wherein the bottom surfaces fully envelop and engage the bottom walls; wherein the pressure plate includes a lower surface and a plurality of bores 63 spaced apart from each other on the lower surface, and wherein the bores 63 are each configured to/capable of receiving a respective pin for directly coupling the pressure plate to the rotor hub; wherein the pressure plate includes a central bore (34b or about 78) configured to receive a shaft portion of the rotor hub, and wherein the central bore is tapered; wherein the pressure plate includes an external side surface 54a that is tapered; an elongate reinforcement element 18 extending along a path around at least one exterior surface of the rotor body and extending around at least one exterior surface of the pressure plate (Figure 2 and col. 5, line 66 - col. 6, line 19; col. 8, lines 1-3); wherein the path can be circular or helical (col. 6, lines 4-9 and lines 51-55; col. 8, lines 9-11); the first reinforcement element 18 having an inner surface which conforms to the external side surface of the rotor body - Figure 2; the elongate reinforcement 18 extending between a first position radially outward relative to at least one exterior surface of the rotor body 10 and a second position below a portion of the pressure plate and radially inward relative to the bottom walls - Figure 2; a lid having a planar lower surface at 70, wherein the rotor body includes a planar upper surface engaging the planar lower surface; wherein the pressure plate includes first and second lower surfaces offset from each other to define a step, and wherein the elongate reinforcement extends to the step (see the area proximate 54 in Figure 2 showing said step); a lid 70 having an annular flange defining a peripheral recess, wherein a portion of the elongate reinforcement 18 is received within the peripheral recess (see the area proximate 75 in Figure 2); wherein the elongate reinforcement includes at least one carbon fiber strand (col. 6, lines 3-19).
The patent to PIRAMOON ‘169 teaches that the reinforcement element 18 extending around the rotor body can extend either in a circular path or a helical path 82 (col. 6, lines 4-9 and lines 51-55; col. 7, line 53 - col. 8, line 19) produced via separate strands 18a and 18b that are wound around the rotor via the guides 80a and 80b but does not disclose the additional second reinforcement element. For example, the reinforcement element 18a when wound in a circular path can generate the circular lip 118:
In the embodiment shown and described herein, the strand 18a may further be applied to the rotor body 12 along a path extending in a generally circumferential direction at least partly around the upper end 12a of the rotor body 12 to thereby define a lip 118 (FIG. 2) proximate the upper end 12a of rotor body 12. To this end, and as shown in FIGS. 4B through 4D, a fixture 124 may be placed at the upper end 12a of the rotor body 12 such that the strand 18a is wrapped around the generally cylindrical fixture 124 in order to form the lip 118 (FIG. 2) located above the upper end 12a of rotor body 12. - per col. 8, lines 9-19.
PIRAMOON ‘522 discloses in Figure 9A an analogous rotor body RH having first WV and second WP reinforcement elements disposed around the rotor body; the first reinforcement element Wv having an inner surface which conforms to the external side surface of the rotor body - Figure 9A.
It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided PIRAMOON ‘169 with a second reinforcement element as taught by PIRAMOON ‘522 for the purpose of providing further reinforcement to the rotor body in both the vertical and peripheral directions - col. 6, line 52 - col. 7, line 7.
The patent to PIRAMOON ‘169 shows an O-ring 75 cooperating with the lid and rotor body (Figure 2) but not a plurality of O-rings. With respect to multiple O-rings, the mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a “web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
In this instance, to provide more than one O-ring seal at the lid/rotor body interface in PIRAMOON ‘169 to provide enhanced sealing capability between such surfaces would not produce a new and unexpected result, rendering such duplication to provide a pair of O-rings being well within the realm of obviousness.
The patent to PIRAMOON ‘169 teaches the recited subject matter as noted above and discloses that a reinforcement element/pressure ring 18 extending around the rotor body can extend either in a circular path or a helical path (col. 6, lines 4-9 and lines 51-55; col. 8, lines 9-11) but does not disclose the first and second reinforcement elements.
However, the patent to PIRAMOON ‘522 discloses in Figure 9A an analogous rotor body RH having first WV and second WP reinforcement elements disposed around the rotor body; the first reinforcement Wv having an inner surface which conforms to the external side surface of the rotor body - Figure 9A and the second reinforcement Wp extending around an exterior surface of the first reinforcement Wp along a path - Figure 9A. It would have been obvious to one skilled in the art before the effective filing date of the invention to have provided PIRAMOON ‘169 with first and second reinforcement elements as taught by PIRAMOON ‘522 for the purpose of providing further reinforcement to the rotor body.
Furthermore, the product-by-process limitations appearing in one or more claims (i.e., the “press-fitted” claim language) does not impart patentability to the claims per MPEP 2113.
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 1 and 5-16 of the instant application are rejected on the ground of nonstatutory obviousness-type double patenting (ODP) as being unpatentable over claims 1-30 of USP 12,134,101 B2 to PIRAMOON.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the patented claims 1-30 clearly anticipate the subject matter of the pending claims 1 and 5-16 in the instant CON application.
In the alternative, the patented claims are a species of the more generic claims of the instant application. As such, a species anticipates a genus. Thus, the subject matter of the pending application claims is anticipated by the subject matter of the patented claims. Accordingly, since the sets of claims in the instant application and patent effectively recite the same elements, these sets of claims, although not alike, are not patentably distinct from each other giving rise to this double patenting rejection.
Furthermore, in view of this analysis, the following aspects should be noted:
The disclosures of both the instant application and the ‘101 patent are substantially similar.
The instant application claims were not presented earlier for examination on the merits.
The instant application claims are directed substantially to the same embodiment as the claims of the ‘101 patent.
The inventive entity of the instant application and the ‘101 patent is the same.
The instant application does not appear to be the product of a restriction requirement made during prosecution of the ‘101 patent.
For the foregoing reasons, the obviousness type double patenting rejection is justified and a timely filed and proper terminal disclaimer will be necessary to overcome this ODP rejection.
Specification
The substitute specification filed 13 SEP 2024 is approved for entry and has been entered.
The abstract and title as filed are approved.
Response to Amendment
Applicant's arguments filed 16 MAR 2026 have been fully considered but they are not persuasive.
Following the mandate of the Supreme Court to understand the prior art— including combinations of the prior art—in a flexible manner that credits the common sense and common knowledge of a PHOSITA, the Federal Circuit has made it clear that a narrow or rigid reading of prior art that does not recognize reasonable inferences that a PHOSITA would have drawn is inappropriate. Any argument that the prior art lacks a specific teaching will not be sufficient to overcome an obviousness rejection when the allegedly missing teaching would have been understood by a PHOSITA—by way of common sense, common knowledge generally, or common knowledge in the relevant art.
In this instance, the four corners of the PIRAMOON patents above collectively teach and suggest multiple reinforcement elements wound around a centrifuge rotor body in helical, circular, vertical, and peripheral winding patterns thus representing common knowledge in the relevant centrifuge art as evidenced by these patents. Said prior art generously provides ample motivation for incorporating multiple reinforcement elements oriented in different directions around a rotor body to achieve the advantages set forth in PIRAMOON ‘169 at col. 8, lines 20-41 and in PIRAMOON ‘522 at col. 6, line 52 - col. 7, line 7. Thus, to provide multiple reinforcement elements wound in different orientations about a centrifuge rotor body in the centrifuge art (e.g., as in circular and helical orientations) as taught and suggested in the PIRAMOON patents above is well within the realm of obviousness to thereby provide multiple reinforcement layers disposed at different positionings about the rotor body to strengthen the rotor body against delamination and failure modes.
The double patenting rejection remain outstanding.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art discloses fiber reinforced centrifuge rotor bodies.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 C.F.R. § 1.136(a).
Per Rule 1.116(b)(3): “An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.” Thus, an amendment after final lacking such showing will be denied entry.
A SHORTENED STATUTORY PERIOD FOR RESPONSE TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST RESPONSE 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 EXTENSION FEE PURSUANT TO 37 C.F.R. § 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR RESPONSE EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION. ANY RESPONSE FILED AFTER THE MAILING DATE OF THIS FINAL REJECTION WILL BE SUBJECT TO THE PROVISIONS OF MPEP 714.12 AND 714.13.
NOTE: The examiner of record follows the interview after-final policy set forth in MPEP 713.09:
Normally, one interview after final rejection is permitted. However, prior to the interview, the intended purpose and content of the interview [agenda] should be presented briefly, preferably in writing. Such an interview may be granted if the examiner is convinced that disposal or clarification for appeal may be accomplished with only nominal further consideration. Interviews merely to restate arguments of record or to discuss new limitations which would require more than nominal reconsideration or new search should be denied. (emphasis added)
The agenda will be made of record per PTO policy.
New USPTO policy limits time for interviews to one per new application or RCE (utility), when during prosecution, the examiner conducts an interview. More than one interview and additional time will only be granted if it is ensured “that the interviews are being used to advance prosecution”.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES COOLEY whose telephone number is (571)272-1139. The examiner can normally be reached M-F 9:30 AM - 6:00 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, CLAIRE X. WANG can be reached at 571-272-1700. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES COOLEY/Examiner, Art Unit 1774
19 MAY 2026
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