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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Provisional Application No. 61/817,715, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application:
“at least one mechanical cylinder that operably agitates the rack” as recited in Claim 6.
Therefore, Claim 6 is not entitled to the filing date of Provisional Application 61/817,715.
The disclosure of the prior-filed application, Provisional Application No. 61/890,523, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application:
“at least one mechanical cylinder that operably agitates the rack” as recited in Claim 6.
Therefore, Claim 6 is not entitled to the filing date of Provisional Application 61/890,523.
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, 3-4, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 5 of U.S. Patent No. 12,213,637 (hereinafter “First Conflicting Patent”). Although the claims at issue are not identical, they are not patentably distinct from each other. For example, all or nearly all of the elements of Claim 1 appear in Claim 1 of the First Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
First Conflicting Patent 12,213,637
Present App 18/986,043
1. A washing device comprising:
an outer shell in which a top compartment and a middle compartment are positioned, the middle compartment is positioned beneath the top compartment,
the top compartment comprises an inner wall providing support and mounting surfaces for a manifold dispenser, the manifold dispenser comprises at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises an inner wall providing support and mounting surfaces, the middle compartment also comprises a washing chamber receiving and retaining fluid output by the plurality of liquid outputs of the manifold dispensers, the washing chamber is positioned within the inner wall of the middle compartment, and the middle compartment also comprises a compartment positioned within the inner wall of the middle compartment, the compartment being moveable between a loading/unloading position and the washing position, the compartment includes a top surface with openings for receiving racks holding the plurality of laboratory consumables.
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
Moreover, the subject matter of Claim 3 appears in Claim 2 of the First Conflicting Patent; the subject matter of Claim 4 appears in Claim 3 of the First Conflicting Patent; the subject matter of Claim 6 appears in Claim 5 of the First Conflicting Patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. 11,737,641 (hereinafter “Second Conflicting Patent”) in view of KEARSLEY et al. (US Patent 6357141). For example, most of the elements of Claim 1 appear in Claim 8 of the Second Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Second Conflicting Patent 11,737,641
Present App 18/986,043
8. A washing device comprising:
a manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device; . . .
wherein the washing device comprises a first compartment and a second compartment positioned below the first compartment;
wherein the first compartment contains the manifold dispenser;
wherein the second compartment contains the laboratory consumables held by the rack;
wherein the second compartment comprises a drawer compartment selectively movable out and in between, respectively, an open position and a closed position, the drawer compartment for receiving the plurality of laboratory consumables held by the rack when the drawer compartment is in its open position; …
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
KEARSLEY teaches “a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables” (see Figs. 2-3, 5-6, 9, claims 1 & 12, one nozzle per corresponding well/sample; see also col. 4 line 35-36, col. 4 line 18-19); and “the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables” (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101; see Figs. 2-3, cover 101 is opened and manifold 120 is raised; see Figs. 1, 5-6, 9, cover 101 is closed and manifold 120 is lowered); and the middle/drawer compartment “includes a top surface with an opening” for receiving racks (see Figs. 2-3).
Claims 1, 3-4, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, and 12-13 of U.S. Patent No. 10,285,564 (hereinafter “Third Conflicting Patent”) in view of KEARSLEY et al. (US Patent 6357141). For example, most of the elements of Claim 1 appear in Claim 1 of the Third Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Third Conflicting Patent 10,285,564
Present App 18/986,043
1. A washing device comprising:
a drawer compartment selectively movable out and in between, respectively, an open and a closed position, the drawer compartment for receiving a plurality of laboratory consumables held by a rack, the drawer compartment comprising a washing chamber; and
a top compartment positioned above the drawer compartment when the drawer compartment is in its closed position, the top compartment housing a manifold dispenser, the manifold dispenser selectively movable up and down between, respectively a loading/unloading position and a washing position, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact the plurality of laboratory consumables held by the rack when the manifold dispenser is in its washing position and the drawer compartment is in its closed position;
wherein the washing chamber receives the fluid operably directed by the plurality of liquid outputs of the manifold dispenser.
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
KEARSLEY teaches “a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables” (see Figs. 2-3, 5-6, 9, claims 1 & 12, one nozzle per corresponding well/sample; see also col. 4 line 35-36, col. 4 line 18-19); and the manifold dispenser is vertically movable “relative to the rack” (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101, wherein opening cover 101 raises manifold 120 and closing cover 101 lowers manifold 120; see Figs. 1-3, racks 113 are stationary within main housing 100); and the middle/drawer compartment “includes a top surface with an opening” for receiving racks (see Figs. 2-3).
Moreover, the subject matter of Claim 3 appears in Claim 12 of the Third Conflicting Patent; the subject matter of Claim 4 appears in Claim 13 of the Third Conflicting Patent; the subject matter of Claim 6 appears in Claim 6 of the Third Conflicting Patent.
Claims 1, 3-4, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 15 of U.S. Patent No. 9,421,289 (hereinafter “Fourth Conflicting Patent”) in view of KEARSLEY et al. (US Patent 6357141). For example, most of the elements of Claim 1 appear in Claim 1 of the Fourth Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Fourth Conflicting Patent 9,421,289
Present App 18/986,043
1. A washing device comprising:
a top compartment comprising a manifold dispenser, wherein the manifold dispenser comprises at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack;
a middle compartment positioned below the top compartment and comprising a washing chamber capable of receiving fluid output by the plurality of liquid outputs of the manifold dispenser, the washing chamber having a floor comprising a material transparent to ultraviolet (UV) light; and
a bottom compartment positioned below the washing chamber, the bottom compartment having a light source mounted thereto, wherein the light source is capable of outputting UV light in the direction of the washing chamber and through the floor of the washing chamber;
wherein the manifold dispenser is capable of being raised and lowered vertically relative to the middle compartment.
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
KEARSLEY teaches “a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables” (see Figs. 2-3, 5-6, 9, claims 1 & 12, one nozzle per corresponding well/sample; see also col. 4 line 35-36, col. 4 line 18-19); and the manifold dispenser is vertically movable “relative to the rack to alternate between loading or unloading, and washing positions for the plurality of laboratory consumables” (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101, wherein opening cover 101 raises manifold 120 and closing cover 101 lowers manifold 120; see Figs. 1-3, racks 113 are stationary within main housing 100); and the middle/drawer compartment comprises “a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables” (see Fig. 4A, claims 11 & 22, removable adapter 112 has a top surface with an opening; see Fig. 3, adapter 112 is at a first position outside chamber 103; see Fig. 2, adapter 112 is at a second position inside chamber 103).
Moreover, the subject matter of Claim 3 appears in Claim 2 of the Fourth Conflicting Patent; the subject matter of Claim 4 appears in Claim 3 of the Fourth Conflicting Patent; the subject matter of Claim 6 appears in Claim 15 of the Fourth Conflicting Patent.
Claims 1 and 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5-6 of U.S. Patent No. 9,744,570 (hereinafter “Fifth Conflicting Patent”) in view of KEARSLEY et al. (US Patent 6357141). For example, most of the elements of Claim 1 appear in Claim 1 of the Fifth Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Fifth Conflicting Patent 9,744,570
Present App 18/986,043
1. A washing device comprising:
a fluid dispenser that operably directs a cleaning fluid to contact one or more objects to be cleaned, the one or more objects to be cleaned being contained by the washing device, the fluid dispenser comprising a manifold dispenser; . . .
a top compartment capable of receiving the manifold dispenser, wherein the manifold dispenser comprises at least one liquid input and a plurality of liquid outputs that operably direct the cleaning fluid to contact a plurality of laboratory consumables held by a rack;
a middle compartment positioned below the top compartment and comprising . . .
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
KEARSLEY teaches “a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables” (see Figs. 2-3, 5-6, 9, claims 1 & 12, one nozzle per corresponding well/sample; see also col. 4 line 35-36, col. 4 line 18-19); and the manifold dispenser is “capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables” (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101, wherein opening cover 101 raises manifold 120 and closing cover 101 lowers manifold 120; see Figs. 1-3, racks 113 are stationary within main housing 100); and the middle/drawer compartment comprises “a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables” (see Fig. 4A, claims 11 & 22, removable adapter 112 has a top surface with an opening; see Fig. 3, adapter 112 is at a first position outside chamber 103; see Fig. 2, adapter 112 is at a second position inside chamber 103).
Moreover, the subject matter of Claim 3 appears in Claim 5 of the Fifth Conflicting Patent; the subject matter of Claim 4 appears in Claim 6 of the Fifth Conflicting Patent.
Claims 1, 3-4, and 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 15 of U.S. Patent No. 10,155,055 (hereinafter “Sixth Conflicting Patent”) in view of KEARSLEY et al. (US Patent 6357141). For example, most of the elements of Claim 1 appear in Claim 1 of the Sixth Conflicting Patent, as shown in the table below (the same/similar elements are in boldface):
Sixth Conflicting Patent 10,155,055
Present App 18/986,043
1. A washing device comprising:
a top compartment comprising a manifold dispenser, wherein the manifold dispenser comprises at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack, a number of liquid outputs being equal to a number of laboratory consumables such that each one of the fluid outputs operably directs fluid at a corresponding one of the laboratory consumables;
a middle compartment positioned below the top compartment and comprising a washing chamber capable of receiving fluid output by the plurality of liquid outputs of the manifold dispenser, the washing chamber having a floor comprising a material transparent to ultraviolet (UV) light; . . .
1. A washing device comprising:
a top compartment and a middle compartment positioned beneath the top compartment,
a manifold dispenser positioned within the top compartment, the manifold dispenser comprising at least one liquid input and a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device,
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables, and
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions for the plurality of laboratory consumables,
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
KEARSLEY teaches the manifold dispenser is “capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing positions for the plurality of laboratory consumables” (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101, wherein opening cover 101 raises manifold 120 and closing cover 101 lowers manifold 120; racks 113 are stationary within main housing 100); and the middle/drawer compartment comprises “a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables” (see Fig. 4A, claims 11 & 22, removable adapter 112 has a top surface with an opening; see Fig. 3, adapter 112 is at a first position outside chamber 103; see Fig. 2, adapter 112 is at a second position inside chamber 103).
Moreover, the subject matter of Claim 3 appears in Claim 2 of the Sixth Conflicting Patent; the subject matter of Claim 4 appears in Claim 3 of the Sixth Conflicting Patent; the subject matter of Claim 6 appears in Claim 15 of the Sixth Conflicting Patent.
Claim Objections
In Claim 1 line 9-11, “the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between loading or unloading, and washing, positions . . .” should be changed as follows:
the manifold dispenser is capable of being raised and lowered vertically relative to the rack to alternate between a loading/unloading position, and a washing position . . .
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, 3-4, and 6 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 recites “a top compartment and a middle compartment positioned beneath the top compartment” at line 2, “top compartment” at line 3, “middle compartment” at line 12. It’s unclear whether or not the claim requires a “bottom” compartment beneath the middle compartment. If a bottom compartment is not required, then it’s unclear what’s meant by “middle,” i.e., what makes the middle compartment considered “middle”? Clarification is requested.
As a suggestion, “top compartment” may be changed to “first compartment,” and “middle compartment” may be changed to “second compartment.”
Claim 1 recites “a plurality of laboratory consumables held by a rack in the washing device” at line 5. It’s unclear whether or not the recited “rack” and “laboratory consumables” are requisite structures of the claimed device. The claim language does not explicitly recite that the washing device comprises the rack and the consumables. And according to the specification, a rack holding consumables are loaded into the washing device for cleaning, and then unloaded from the washing device after cleaning (see Spec. at ¶¶ 0080, 0102).
Thus, for examination purpose, the rack and the consumables are interpreted as articles worked upon by the washing device, and not as requisite structures of the washing device.
Claim 1 recites:
“…the manifold dispenser comprising…a plurality of liquid outputs that operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device” (line 3-5)
“a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables” (line 6-8)
Although the recited “outputs” are modified by the word “liquid,” those outputs operably direct a fluid—the word “fluid” means either a gas or a liquid—at the consumables. Thus, the scope of the claim language allows for liquid outputs to operably direct a gas at the consumables, thereby creating confusion as to what “liquid outputs” mean. Clarification is requested.
Claim 1 recites at lines 6-8:
a number of the plurality of liquid outputs being such that each liquid output of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables
First, it’s unclear what’s meant by “a number”: Does it mean a total number/quantity of liquid outputs? Or does it mean a number/quantity less than the total number/quantity of liquid outputs? Clarification is requested.
Second, the metes and bounds of the recited “number of the plurality of liquid outputs” are unclear, because the claim language defines the number of outputs—which are requisite structures of the washing device—based on laboratory consumables, which are not requisite structures of the washing device. This confusion may be illustrated by a hypothetical scenario:
Suppose the washing device has 24 liquid outputs for cleaning a rack that can hold 24 tips, but only 23 tips are actually present in the rack loaded into the washing device (i.e., one tip has been removed from the rack before loading). How many liquid outputs does the washing device now have—23 or 24? If still 24 outputs, then one output would not be “operably direct[ing] the fluid at a corresponding laboratory consumable,” in violation of the claim language. Clarification is requested.
Claim 1 recites at lines 12-14:
the middle compartment comprises a compartment moveable between a loading/unloading position and a washing position, the compartment includes a top surface with an opening for receiving racks holding laboratory consumables.
First, it’s unclear if “the middle compartment” (line 12) and “a compartment” (line 12) are the same or different compartments. Second, it’s unclear which compartment—e.g., “a top compartment” (line 2), “a middle compartment” (line 2), and “a compartment” (line 12)—is considered “the” compartment at line 13. Clarification is requested.
Claim 3 recites: “the rack comprises a tip rack and the plurality of laboratory consumables comprise a plurality of pipette tips.” As explained above, the rack (including tip rack) and the consumables (including pipette tips) are not requisite structures of the claimed washing device. Thus, it’s unclear what additional structural limitation, if any, is imposed on the claimed washing device by the language of Claim 3. Clarification is requested.
Claim 4 recites: “the tip rack is configured to hold 24, 48, 96, 384, or 1536 pipette tips.” As explained above, the rack (including tip rack) and the consumables (including pipette tips) are not requisite structures of the claimed washing device. Thus, it’s unclear what additional structural limitation, if any, is imposed on the claimed washing device by the language of Claim 4. Clarification is requested.
Claim 6 is rejected because it depends on a claim rejected herein.
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, and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KEARSLEY et al. (US Patent 6357141).
Regarding Claim 1, KEARSLEY teaches a device (see Figs. 1-9, abstract).
As a preliminary matter, the word “washing” in the preamble is non-limiting, because the word “washing” only recites the purpose of intended use of the claimed apparatus, and the body of the claim fully and intrinsically sets forth all of the limitations of the claimed invention. See MPEP § 2111.02(II).
KEARSLEY’s device is structurally fully capable of performing “washing.” For example, KEARSLEY’s manifold dispenser 120 (see Figs. 2-3, 5-6, 8-9) is structurally fully capable of receiving a liquid and dispensing the liquid to samples in a rack (e.g., micro-plate 113) positioned below the manifold dispenser (see Figs. 2-3, 5-6, 8-9). A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II. ("Apparatus claims cover what a device is, not what a device does"). 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.
Moreover, the recited “a plurality of laboratory consumables held by a rack” are interpreted as articles worked upon by the claimed apparatus, and not as requisite structures of the claimed apparatus. See MPEP § 2115 (“inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”).
KEARSLEY’s device comprises a top compartment (cover 101) and a middle compartment (main housing 100) positioned beneath the top compartment (see Figs. 5-6, 9).
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KEARSLEY’s device comprises a manifold dispenser (manifold 120) positioned within the top compartment (in cover 101, see Figs. 2-3, 5-6, 8-9), the manifold dispenser comprising an input (see Figs. 8-9) and a plurality of outputs (nozzles 121, see Figs. 5-6, 8-9).
The word “liquid”—as in “liquid input” and “liquid outputs”—only recites the purpose of intended use for the claimed “input” and “outputs” (which are just openings) and does not impose any structural requirements on those elements. Regardless of whether a gas or a liquid flows through manifold 120, the structures of such input and outputs—which are just openings—remain unchanged. A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II.
The recited function of “operably direct fluid to contact a plurality of laboratory consumables held by a rack in the washing device” is interpreted as intended use, because it’s directed to how the outputs (nozzles 121) of the manifold dispenser are used without imposing any structural requirements. A claimed apparatus must be distinguished from the prior art in terms of structure. See MPEP § 2114.II. ("Apparatus claims cover what a device is, not what a device does"). The outputs (nozzles 121) of the manifold dispenser (manifold 120) are structurally fully capable of performing the recited function. For example, a fluid (i.e., a gas or a liquid) supplied into manifold 120 would be ejected via nozzles 121, which would operably direct the fluid to contact a plurality of laboratory consumables (e.g., samples 124) held by a rack (e.g., micro-plate 113) in KEARSLEY’s device (see Fig. 9).
In KEARSLEY’s device, a number of the plurality of liquid outputs (the number of nozzles 121 may be 96, see col. 4 line 35-36) being such that each liquid output (each nozzle 121) of the plurality of liquid outputs operably directs the fluid at a corresponding laboratory consumable of the plurality of laboratory consumables (see Figs. 2-3, 5-6, 9, claims 1 & 12, one nozzle per corresponding well/sample; see also col. 4 line 35-36, col. 4 line 18-19, 96 nozzles for 96 wells/samples).
KEARSLEY’s manifold dispenser (manifold 120) is structurally fully capable of being raised and lowered vertically (see Figs. 1-3, col. 4 lines 10-13, manifold 120 is connected to hinged cover 101, which opens and closes) relative to the rack (e.g., micro-plate 113 mounted in main housing 100) to alternate between a first position (see Figs. 2-3, cover 101 is opened and manifold 120 is raised) and a second position (see Figs. 1, 5-6, 9, cover 101 is closed and manifold 120 is lowered) for the plurality of laboratory consumables (samples 124). The first position corresponds to the recited “loading or unloading” position, and the second position corresponds to the recited “washing” position.
KEARSLEY’s middle compartment (main housing 100) comprises a compartment (adapter 112, see Figs. 4A-4B & 5, col. 4 line 19-30; the adapter is removable, see claims 11 & 22) moveable between a first position (see Fig. 3, adapter 112 is removed from chamber 103) and a second position (see Fig. 2, adapter 112 is mounted within chamber 103), the compartment includes a top surface with an opening (see Fig. 4A), which is structurally fully capable of receiving racks (e.g., different micro-plates 113) holding laboratory consumables (e.g., samples 124). The first position corresponds to the recited “loading/unloading” position and the second position corresponds to the recited “washing” position.
Regarding Claim 3, KEARSLEY teaches the device of Claim 1. As explained above, the recited “a plurality of laboratory consumables held by a rack” are interpreted as articles worked upon by the claimed apparatus, and not as requisite structures of the claimed apparatus. See MPEP § 2115 (“inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims”).
KEARSLEY’s device is structurally fully capable of receiving and washing a rack (e.g., micro-plate 113), which can hold pipette tips therein (e.g., in well cavities 122, see Figs. 4A-4B & 5). In other words, KEARSLEY’s device is structurally fully capable of receiving and washing a “tip rack” holding a plurality of pipette tips (which correspond to the recited “plurality of laboratory consumables”).
Regarding Claim 4, KEARSLEY teaches the device of Claim 3. KEARSLEY teaches that the rack (micro-plate 113) has 96 wells (see col. 4 col. 4 line 18-19). Thus, KEARSLEY’s device is structurally fully capable of receiving and washing a “tip rack” capable of holding 96 pipette tips therein.
Conclusion
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/RICHARD Z. ZHANG/Examiner, Art Unit 1714
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