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 .
It is noted that the instant application is a continuation of US Patent Application No. 17/608,745, filed November 3, 2021, issued as US Patent No. 12,210,028. Any information considered in the parent application has been considered in the instant application.
The specification, abstract, drawings and claims of December 20, 2024 are under examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) was/were submitted on December 20, 2024; April 22, 2025; May 15, 2025; July 31, 2025; October 24, 2025; November 21, 2025; March 17, 2026; April 24, 2026; May 13, 2026. The submission(s) is/are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is/are being considered by the examiner.
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “fluid extraction device” in claim 1. See also “mechanism configured to selectively apply a force on the receptacle” in claim 15.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 14 is 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 14 recites “the fluid extraction device is a pipettor”. However, the “fluid extraction device” has not been set forth as being part of the system. Therefore, the limiting nature of claim 14 is unclear.
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.
Claim(s) 1-3, 9, 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker et al. (US Pub 20170254827A1).
Regarding Claim(s) 1, Walker et al. teaches a receptacle delivery system for an instrument (108) of a plurality of instruments, the receptacle deliver system comprises a carriage (base 197) supporting a puck (carrier 101), wherein the carriage is configured to move with the puck from a first location to a second location within the instrument. The language “the first location being a location where a receptacle supported by a carrier is positioned to be transferred to the puck supported by the carriage, and the second location being a location where the receptacle seated in the puck is positioned so that fluid from the receptacle can be drawn into a tip associated with a fluid extraction device of the instrument” is not considered to limit the structure of the system, as the language is considered a recitation of the manner of operating the system. The language does not set forth any structural limitations that further limit the system. See MPEP 2114. Further, the “fluid extraction device” is set forth as being “of the instrument” and is not part of the receptacle delivery system.
Regarding Claim(s) 2, the puck is configured to rotate relative to the carriage about a vertical axis of the puck. The carrier is not rotationally fixed; therefore, the carrier is configured to rotate.
Regarding Claim(s) 3, Walker et al. teaches a label reader (156) configured to read information encoded in a machine-readable label on the receptacle seated in the puck when the carriage is positioned at the first location.
Regarding Claim(s) 9 Walker et al. teaches a conveyor (114).
Regarding Claim(s) 12, Walker et al. teaches a rail (186), wherein the carriage is configured to move on the rail from the first location to the second location [Para. 219].
Regarding Claim(s) 13, Walker et al. teaches a first electric motor (drive assembly 192) [Para. 231, “drive assembly 192 includes a motor”] operatively coupled to the carriage and configured to move the carriage from the first location to the second location.
Regarding Claim(s) 14, Walker et al. teaches a pipettor (158).
Regarding Claim(s) 15, the carriage further comprises a support mechanism (gripper 188) configured to selectively apply a force on the receptacle when the carriage is positioned at the second location to prevent extraction of the receptacle from the puck. The language “when the tip associated with the fluid extraction device is withdrawn from the receptacle” is not considered to the limit the structure of the claim, as the fluid extraction device is not considered part of the system.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker et al. as applied to claim 1 above, and further in view of Quinlan et al. (USPN 5941366).
Regarding Claim(s) 16, Walker et al. teaches the limitations described above, yet fails to teach the puck comprises a plurality of spring-loaded members configured to removably support the receptacle therebetween. Quinlan et al. teaches a puck (carrier 4) having a plurality of spring-loaded fingers (retainer members 12, biased by O-ring 30). It would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to provide a plurality of spring-loaded fingers as taught by Quinlan et al. to hold the receptacle since the elements were known in the art and one of ordinary skill, using known methods, could have combined the elements and achieved predictable results.
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, 2, 4-13, 15, 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,210,028. 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.
Regarding Claim(s) 1, ‘028 teaches a receptacle delivery system for an instrument of a plurality of instruments [Claim 1, “A receptacle delivery system for an instrument”], the receptacle deliver system comprises a carriage supporting a puck [Claim 1, “a puck coupled to the carriage”, wherein the carriage is configured to move with the puck from a first location to a second location within the instrument [Claim 1, “a carriage configured to move from a first location to a second location”]. The language “the first location being a location where a receptacle supported by a carrier is positioned to be transferred to the puck supported by the carriage, and the second location being a location where the receptacle seated in the puck is positioned so that fluid from the receptacle can be drawn into a tip associated with a fluid extraction device of the instrument” is not considered to limit the structure of the system, as the language is considered a recitation of the manner of operating the system. The language does not set forth any structural limitations that further limit the system. See MPEP 2114. Further, the “fluid extraction device” is set forth as being “of the instrument” and is not part of the receptacle delivery system.
Regarding Claim(s) 2, ‘028 teaches the puck is configured to rotate relative to the carriage about a vertical axis of the puck [Claim 10, “the puck is rotatably supported in a housing of the carriage”].
Regarding Claim(s) 4, ‘028 teaches a sensing system coupled to the carriage, wherein the sensing system is configured to determine whether a receptacle is seated in the puck [Claim 10, “a sensing system configured to detect… whether a receptacle seated in the puck”].
Regarding Claim(s) 5, ‘028 teaches the sensing system is configured to detect (a) whether a longitudinal axis of a receptacle seated in the puck is inclined with respect to a vertical axis of the puck [Claim 10, “whether a longitudinal axis of a receptacle seated in the puck is inclined with respect to the vertical axis of the puck”], and/or (b) whether a receptacle seated in the puck is inserted to a desired depth [Claim 10, “whether a receptacle seated in the puck is inserted to a desired depth in the puck”].
Regarding Claim(s) 6, ‘028 teaches the puck comprises a first passageway that extends transverse to and is offset from a vertical axis of the puck [Claim 10, “the puck comprises a first passageway that extends transverse to and is offset from a vertical axis of the puck”], and the carriage comprises a second passageway that extends transverse to and is offset from the vertical axis of the puck [Claim 10, “a housing of the carriage, wherein the housing comprises a second passageway that extends transverse to and is offset from the vertical axis of the puck”].
Regarding Claim(s) 7, ‘028 teaches the sensing system comprises a signal emitter and a signal detector [Claim 10, “the sensing system comprises a signal emitter and a signal detector”], and wherein when the first and second passageways are aligned, the signal detector is configured to receive a signal from the signal emitter through the aligned first and second passageways [Claim 10, “wherein when the first and second passageways are aligned, the signal detector is configured to receive a signal from the signal emitter through the aligned first and second passageways”].
Regarding Claim(s) 8, ‘028 teaches the signal emitter is an optical emitter, the signal detector is an optical detector, and the signal is an optical beam [Claim 11, “the signal emitter is an optical emitter, the signal detector is an optical detector, and the signal is an optical beam”].
Regarding Claim(s) 9, ‘028 teaches a conveyor extending adjacent to each of a plurality of instruments [Claim 17, “the receptacle delivery conveyor is configured to transport the receptacle carrier supporting the receptacle to locations adjacent multiple instruments”].
Regarding Claim(s) 10, ‘028 teaches a carrier configured to support a receptacle containing a fluid and move on the conveyor while the receptacle is supported by the carrier [Claim 17, “the receptacle delivery conveyor is configured to transport the receptacle carrier supporting the receptacle”].
Regarding Claim(s) 11, ‘028 teaches a pick and place device configured to transfer a receptacle from the carrier to the puck [Claim 17, “the pick-and-place device is configured to transfer a receptacle to the puck from a receptacle carrier”].
Regarding Claim(s) 12, ‘028 teaches a rail, wherein the carriage is configured to move on the rail from the first location to the second location [Claim 16, “a rail, wherein the carriage is configured to move on the rail between the first and second locations”].
Regarding Claim(s) 13, ‘028 teaches a first electric motor operatively coupled to the carriage and configured to move the carriage from the first location to the second location [Claim 9, “first and second electric motors, wherein the first electric motor is operatively coupled to the carriage and configured to move the carriage between the first location and the second location”].
Regarding Claim(s) 15, ‘028 teaches the carriage further comprises a support mechanism configured to selectively apply a force on the receptacle when the carriage is positioned at the second location to prevent extraction of the receptacle from the puck [Claim 8, “the pair of support pads are configured to apply a clamping force to the receptacle when the carriage is positioned at the second location”]. The language “when the tip associated with the fluid extraction device is withdrawn from the receptacle” is not considered to the limit the structure of the claim, as the fluid extraction device is not considered part of the system.
Regarding Claim(s) 16, ‘028 teaches the puck comprises a plurality of spring-loaded members configured to removably support the receptacle therebetween [Claim 18, “the puck comprises a plurality of spring-loaded members configured to removably support a receptacle therebetween”].
Claims 3 and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12,210,028 in view of Walker et al.
Regarding Claim(s) 3, ‘028 teaches the limitations described above, yet fails to teach a label reader configured to read information encoded in a machine-readable label on the receptacle seated in the puck when the carriage is positioned at the first location. Walker et al. teaches a label reader (156). It would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to provide a label reader to read a label to identify the receptacle since the elements were known in the art and one of ordinary skill, using known methods, could have combined the elements and achieved predictable results.
Regarding Claim(s) 14, ‘028 teaches the limitations described above, yet fails to teach the fluid extraction device is a pipettor. Walker et al. teaches a pipettor (158). It would have been obvious before the effective filing date of the claimed invention to a person of ordinary skill in the art to provide a pipettor to withdraw fluid from a receptacle as taught by Walker et al. since the elements were known in the art and one of ordinary skill, using known methods, could have combined the elements and achieved predictable results.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. USPN 10081494 is the issued patent of cited US Pub 20160336209 A1. USPN 10167144 is the issued patent of cited US Pub 20160159579 A1. USPN 9506943 is the issued patent of cited US Pub 20130125675 A1. USPN 7028831 is the issued patent of cited US Pub 20050194237 A1. USPN 9399295 is the issued patent of cited US Pub 20130249229 A1. USPN 9645159 is the issued patent of cited US Pub 20150355207 A1. USPN 12546794, USPN 12656365, and USPN 12656364 are issued patents of related applications.
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.
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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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