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 .
Claim Interpretation
In the patentability analysis of device claims 1-9, aspects or limitations that the examiner interprets as functional are generally italicized whereas aspects interpreted as structural components are normally bolded. The bold font and italics are shown when the structure and function are initially introduced though not necessarily repeated, particularly in dependent claims. The examiner applies this formatting for both the examiner and applicant’s convenience. However, absent the referenced typestyles, the patentability analysis will still be clear regarding which limitations the examiner interprets as structural versus functional.
The claims are apparatus/device/system claims requiring only the recited structural components, although structured with physical features that can perform the stated functions or the intended uses. Functional limitations state either an intended use or operation, a manner of operating a device, apparatus or system, or what the apparatus/system does. Apparatus claims cover what a device is, not what a device does. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990). Also, a claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Of course, in the patentability analysis of these apparatus/system claims, functional features are not ignored and applicant can and should employ such language where appropriate and helpful. However, if a prior art structure is capable of performing the intended use, or if such apparatus can operate in the manner described, then it meets the claim limitation (MPEP §§ 2114, 2173.05(g)).
In summary, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Any referral to applicant's specification will generally pertain to the corresponding PG published application, if available, otherwise the original specification. The below patentability analysis provides one or more interpretations and claim mappings of the claimed structures and/or limitations although other interpretations may be possible. In the patentability analysis, the Office applies the broadest reasonable interpretation (BRI) consistent with the specification. However, specific limitations from the specification are not read into the claims. See MPEP §§2111, 2173.01 I.
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 1-9 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, last line, recites biased in a contracting direction at least when enlarged. The phrase "at least when enlarged" renders the claim indefinite because it is unclear if the conditional “when” requires the capability of receptacle to be “enlarged” . Claim 7 also contains the same indefinite language.
In claims 1-9, the receptacle is the only limiting structure in the claimed heat transfer device. The container including an enclosed portion (and tapered tip found in dependent claim 4) is not positively recited as part of the invention. Therefore, the claim recitations that attempt to limit the receptacle relative to the container are confusing and indefinite (for example, the receptacle is configured to be enlargeable and contractible in a predetermined direction different from the insertion/removal direction of the enclosed portion (of the container)).
Claim 6 recites a block pair is guided by a shaft. It is not clear from the claim if applicant intends the shaft to be positively recited as part of the heat transfer device or not. The examiner suggest for clarification, “heat transfer device includes a shaft and the second portion is formed of a block pair, wherein the shaft is configured to guide the block pair…”. Similar deficiency was found claim 7 regarding the “compression spring”.
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 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 114225995; cited in IDS filed April 15, 2025, hereinafter “Chen”).
Regarding claim 1, Chen discloses a heat transfer device comprising a receptacle (7, 10 Figs. 1-6) into and from which an enclosed portion of a container (test tube) that can enclose a sample is configured to be insertable and removable, the receptacle configured to be able to transfer heat to and from the received enclosed portion (heater), wherein the receptacle is configured to be enlargeable and contractible (receptacle is divided into at least three block pads 10), one of these portions receives a tapered portion of the container (test tube, the blocks are guided by shafts 19 and to be biased (using springs 18, 20) in a contracting direction at least when enlarged. Enlargement is in a direction perpendicular to the insertion direction (see Fig. 5).
Note: the receptacle is the only limiting structure in the heat transfer device. The recitations of the container including an enclosed portion and tapered tip (claim 4) have not received patentable weight.
Regarding claim 2, Chen discloses the receptacle is constituted of a plurality of divided portions (at least three block pads 10).
Regarding claim 3, Chen discloses the receptacle is configured to be enlargeable and contractible in a predetermined direction different from an insertion/removal direction of the enclosed portion. The receptacle of Chen is directed into at least three block portions 10), one of these portions receives a tapered portion of the container (test tube), the blocks are guided by shafts 19 and to be biased (using springs 18, 20) in a contracting direction at least when enlarged. Enlargement is in a direction perpendicular to the insertion direction (see Fig. 5).
Regarding claim 4, Chen discloses the receptacle has a first portion 5 configured to be able to receive a tapered tip of the enclosed portion and a second portion 8 configured to be able to receive a portion of the enclosed portion other than the tip, and the second portion is configured to be enlargeable and contractible in a predetermined direction different from an insertion/removal direction of the enclosed portion, and to be biased in the contracting direction at least when enlarged (see Fig. 1).
Regarding claim 5, Chen discloses the first portion 5 and the second portion 8 are biased in a direction that brings the first portion and the second portion close to each other (along sliding groove, see Fig. 4).
Regarding claim 6, Chen discloses the second portion is formed of a block pair 10 that is guided, by a shaft 19, to be able to be apart from and close to each other in the predetermined direction (perpendicular to the insertion direction, see Fig. 5).
Regarding claim 7, Chen discloses the block pair is biased, by a compression spring pair 18 passed through the shaft 19, in a direction that brings the block pair close to each other in the predetermined direction, at least when enlarged (see Fig. 5).
Regarding claim 8, Chen discloses a heating device comprising: the heat transfer device according to claim 1; and a heater (22 electric heating tube) configured to be able to heat the heat transfer device (see Figs. 5-6).
Claims 1-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li (CN 106732852; cited in IDS filed April 15, 2025, hereinafter “Li”).
Regarding claim 1, Li discloses a heat transfer device comprising a receptacle 10, 16 (see Fig. 1) into and from which an enclosed portion of a container 20 that can enclose a sample is configured to be insertable and removable, the receptacle configured to be able to transfer heat to and from the received enclosed portion (heat tubes 11 in fixing plate 10), wherein the receptacle is configured to be enlargeable and contractible (receptacle is divided into at least three block portions 16, left 8 and right 10), one of these portions receives a tapered portion of the container 20, the blocks are guided by shafts 6,7, and to be biased (using springs 9) in a contracting direction at least when enlarged. Enlargement is in a direction perpendicular to the insertion direction (see Fig. 1).
Note: the receptacle is the only limiting structure in the heat transfer device. The recitations of the container including an enclosed portion and tapered tip (claim 4) have not received patentable weight.
Regarding claim 2, Li discloses the receptacle is constituted of a plurality of divided portions (at least three block portions left 8 and right 10).
Regarding claim 3, Li discloses the receptacle is configured to be enlargeable and contractible in a predetermined direction different from an insertion/removal direction of the enclosed portion. The receptacle of Li is directed into at least three block portions 16, left 8 and right 10), one of these portions receives a tapered portion of the container 20, the blocks are guided by shafts 6,7, and to be biased (using springs 9) in a contracting direction at least when enlarged. Enlargement is in a direction perpendicular to the insertion direction (see Fig. 1).
Regarding claim 4, Li discloses the receptacle has a first portion 16 configured to be able to receive a tapered tip of the enclosed portion and a second portion 8, 10 configured to be able to receive a portion of the enclosed portion other than the tip, and the second portion is configured to be enlargeable and contractible in a predetermined direction different from an insertion/removal direction of the enclosed portion, and to be biased in the contracting direction at least when enlarged.
Regarding claim 5, Li discloses the first portion 16 and the second portion 8, 10 are biased in a direction that brings the first portion and the second portion close to each other via threaded rod 15 (see Fig. 1).
Regarding claim 6, Li discloses the second portion is formed of a block pair 8, 10 that is guided, by a shaft 6, 7, to be able to be apart from and close to each other in the predetermined direction (perpendicular to the insertion direction, see Fig. 1).
Regarding claim 8, Li discloses a heating device comprising: the heat transfer device according to claim 1; and a heater (11 electric heating tube) configured to be able to heat the heat transfer device (see Fig. 2).
Claims 1, 8 and 9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Buse et al., (2014/0038192; cited in IDS filed Sept. 15, 2025, hereinafter “Buse”).
Regarding claim 1, Buse discloses a heat transfer device comprising a receptacle (110, 120 Figs. 1-6) into and from which an enclosed portion of a container 130, 135 that can enclose a sample is configured to be insertable and removable (see para [0105] et seq.), the receptacle configured to be able to transfer heat to and from the received enclosed portion (via a heater 334 see para [0066]-[0071]), wherein the receptacle is configured to be enlargeable and contractible via brace 248, one of these portions receives a tapered portion of the container in a contracting direction at least when enlarged.
Regarding claims 8 and 9, Buse discloses the device includes a heater and robot (receptacle transport mechanism 700) that is used to plate and remove the container or receptacle from the receptacle holder (see Figs. 12D para [0105] et seq.)
Note: the receptacle is the only limiting structure in the heat transfer device. The recitations of the container including an enclosed portion and tapered tip (claim 4) have not received patentable weight.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
No claims are allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure include:
i. Lund et al., (US 6,106,784) which disclose a heating device for a titration plate enables selected sample wells to be thawed by providing an array of individually energizable heat sources each capable of heating a single sample well. A cold plate serves to maintain all other samples in their frozen state; and
ii. Atwood et al., (US 6,015,534) which disclose a one-piece sample tube for use in a PCR thermal cycler having a first substantially cylindrically shaped upper wall section having an external conically beveled shoulder moulded around the entire circumference of the section, the thickness of the wall section above the shoulder being about 0.022 inches and the thickness of the wall section below the shoulder being about 0.015 inches.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-2374. The examiner can normally be reached between 9:30am-7pm EST.
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E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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/P. Kathryn Wright/Primary Examiner, Art Unit 1798