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. 18/429170, filed January 31, 2024, issued as US Patent No. 12,392,791. Any information considered in the parent application has been considered in the instant application.
The specification, abstract, drawings and claims of May 2, 2025 are under examination.
Information Disclosure Statement
The information disclosure statement(s) (IDS) was/were submitted on May 2, 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: “members configured to removable support a receptacle therebetween” in claim 1, which is considered to encompass the fingers. See also “system configured to determine whether a receptacle is supported by the carriage” in claim 1, which is considered to encompass the emitter and detector.
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.
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 1-15, 19 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 clamping mechanism of an instrument, comprising: a carriage configured to move between a first location and a second location of the instrument [Claim 1, “a carriage configured to move from a first location to a second location”], wherein the carriage comprises (a) one or more support members configured to removably support a receptacle therebetween [Claim 18, “a plurality of spring-loaded members configured to removably support a receptacle therebetween”], and (b) a pair of opposed support pads configured to apply a clamping force to a receptacle supported by the carriage as the carriage moves from the first location to the second location and release the clamping force from the receptacle as the carriage moves from the second location to the first location [Claim 1, “clamping mechanism comprises: a pair of opposed support pads”]; 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 and not to apply a clamping force to the receptacle when the carriage is positioned at the first location.”]; and a sensing system configured to determine whether a receptacle is supported by the carriage [Claim 10, “a sensing system configured to detect (a) 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 in the puck”].
Regarding Claim(s) 2, ‘028 teaches the sensing system is configured to determine (a) whether a longitudinal axis of a receptacle supported by the carriage is inclined with respect to a vertical axis [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 supported by the carriage is inserted to a desired depth [Claim 10, “whether a receptacle seated in the puck is inserted to a desired depth”].
Regarding Claim(s) 3, the sensing system comprises a signal emitter and a signal detector positioned at two ends of a linear axis [Claim 10, “the sensing system comprises a signal emitter and a signal detector”], and wherein when a receptacle is properly supported by the carriage, the linear axis (a) passes through a sidewall of the receptacle and (b) is offset from the longitudinal axis of the receptacle [Claim 12, “when the first and second passageways are aligned, (a) the optical emitter is configured to direct the optical beam on an incident area on an external surface of a receptacle seated in the puck and (b) the optical detector is configured to receive at least a portion of the optical beam from the optical emitter if a receptacle is not seated in the puck, wherein if the receptacle is properly seated in the puck, the incident area is offset from a longitudinal axis of the receptacle”].
Regarding Claim(s) 4, ‘028 teaches the signal emitter is an optical emitter and the signal detector is an optical detector [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) 5, ‘028 teaches (a) the optical emitter configured to direct an optical beam on an incident area on an external surface of a receptacle supported by the carriage [Claim 12, “the optical emitter is configured to direct the optical beam on an incident area on an external surface of a receptacle seated in the puck”] and (b) the optical detector configured to receive at least a portion of the optical beam from the optical emitter if a receptacle is not supported by the carriage, wherein when a receptacle is properly supported by the carriage, the incident area is offset from a longitudinal axis of the receptacle [Claim 12, “the optical detector is configured to receive at least a portion of the optical beam from the optical emitter if a receptacle is not seated in the puck, wherein if the receptacle is properly seated in the puck, the incident area is offset from a longitudinal axis of the receptacle”].
Regarding Claim(s) 6, ‘028 teaches when a receptacle is properly supported by the carriage, the incident area is offset from a longitudinal axis of the receptacle by a distance of from about 3 mm to about 6 mm [Claim 13, “if a receptacle is properly seated in the puck, the incident area is offset from the longitudinal axis of the receptacle by a distance from about 3 mm to about 6 mm”].
Regarding Claim(s) 7, ‘028 teaches when a receptacle is properly supported by the carriage, the incident area is offset from a base of the receptacle by a distance of from about 3 mm to about 8 mm [Claim 13, “if a receptacle is properly seated in the puck…and the incident area is offset from a base of the receptacle by a distance from about 3 mm to about 8 mm”].
Regarding Claim(s) 8, see claim 14 of ‘028.
Regarding Claim(s) 9, ‘028 teaches the pair of support pads are configured to be (a) in contact with a receptacle supported by the one or more support members when the carriage is positioned at the second location [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”], and (b) separated from the receptacle when the carriage is positioned at the first location [Claim 8, “not to apply a clamping force to the receptacle when the carriage is positioned at the first location”].
Regarding Claim(s) 10, ‘028 teaches the pair of support pads are configured to move toward each other as the carriage moves from the first location to the second location [Claim 1, “when the carriage moves from the first location to the second location, the pair of meshed gears rotate in opposite directions relative to each other to move the pair of support pads toward each other”] and move away from each other as the carriage moves from the second location to the first location [Claim 6, “rotate the first gear in the second direction and the second gear in the first direction when the carriage moves from the second location to the first location”].
Regarding Claim(s) 11, ‘028 teaches a pair of meshed gears coupled to the pair of support pads, wherein when the carriage moves from the first location to the second location, the pair of meshed gears rotate in opposite directions relative to each other to move the pair of support pads toward each other [Claim 1, “a pair of meshed gears coupled to the pair of support pads, wherein, when the carriage moves from the first location to the second location, the pair of meshed gears rotate in opposite directions relative to each other to move the pair of support pads toward each other”].
Regarding Claim(s) 12, see claim 2 of ‘028.
Regarding Claim(s) 13, see claim 3 of ‘028.
Regarding Claim(s) 14, see claim 4 of ‘028.
Regarding Claim(s) 15, see claim 6 of ‘028.
Regarding Claim(s) 19, see claim 7 of ‘028.
Claims 1, 9-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,216,135. 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, ‘135 teaches a receptacle clamping mechanism of an instrument, comprising: a carriage configured to move between a first location and a second location of the instrument [Claim 1, “a carriage configured to move on the rail between the first location and the second location of the instrument”], wherein the carriage comprises (a) one or more support members configured to removably support a receptacle therebetween [Claim 4, “the carriage further comprises a rotatable puck comprising a plurality of spring-loaded fingers configured to support the receptacle therebetween”], and (b) a pair of opposed support pads configured to apply a clamping force to a receptacle supported by the carriage as the carriage moves from the first location to the second location and release the clamping force from the receptacle as the carriage moves from the second location to the first location [Claim 1, “a pair of opposed support pads, wherein the pair of support pads are configured to (a) move toward a receptacle supported by the carriage as the carriage moves from the first location toward the second location, and (b) move away from a receptacle supported by the carriage as the carriage moves from the second location toward the first location”]; and a sensing system configured to determine whether a receptacle is supported by the carriage [Claim 7, “the carriage further comprises a sensing system configured to detect whether a receptacle is seated in the puck”].
Regarding Claim(s) 9, ‘135 teaches the pair of support pads are configured to be (a) in contact with a receptacle supported by the one or more support members when the carriage is positioned at the second location [Claim 1, “a pair of opposed support pads, wherein the pair of support pads are configured to (a) move toward a receptacle supported by the carriage as the carriage moves from the first location toward the second location”] [Claim 26, “the pair of support pads are configured to apply a clamping force of from about 10N to about 30N to a receptacle supported by the carriage when the carriage is positioned at the second location”], and (b) separated from the receptacle when the carriage is positioned at the first location [Claim 1, “move away from a receptacle supported by the carriage as the carriage moves from the second location toward the first location”].
Regarding Claim(s) 10, ‘135 teaches the pair of support pads are configured to move toward each other as the carriage moves from the first location to the second location and move away from each other as the carriage moves from the second location to the first location [Claim 1, “the pair of support pads are configured to (a) move toward a receptacle supported by the carriage as the carriage moves from the first location toward the second location, and (b) move away from a receptacle supported by the carriage as the carriage moves from the second location toward the first location”].
Regarding Claim(s) 11, ‘135 teaches a pair of meshed gears coupled to the pair of support pads, wherein when the carriage moves from the first location to the second location, the pair of meshed gears rotate in opposite directions relative to each other to move the pair of support pads toward each other [Claim 1, “a pair of meshed cam gears rotatably coupled to the first sidewall”] [Claim 20, “rotate a first gear of the pair of meshed gears in a first direction and a second gear of the pair of meshed gears in a second direction opposite the first direction when the carriage moves from the first location to the second location”].
Regarding Claim(s) 12, see claim 17 of ‘135.
Regarding Claim(s) 13, ‘135 teaches a cam arm, wherein one end of the cam arm is coupled to a gear of the pair of meshed gears and an opposite end of the cam arm is configured to move on a downwardly inclined path when the carriage moves from the first location to the second location [Claim 18, “a cam arm having a first end and a second end, and (b) a ramp having an inclined surface extending substantially parallel to the rail, wherein the first end of the cam arm is coupled to a gear of the pair of meshed gears and the second end of the cam arm is configured to move on the inclined surface of the ramp as the carriage moves between the first and second locations.”].
Regarding Claim(s) 14, see claim 19 of ‘135.
Regarding Claim(s) 15, see claim 20 of ‘135.
Regarding Claim(s) 16, see claims 21 and 22 of ‘135.
Regarding Claim(s) 17, see claim 23 of ‘135.
Regarding Claim(s) 18, see claim 24 of ‘135.
Regarding Claim(s) 19, see claim 25 of ‘135.
Regarding Claim(s) 20, see claim 26 of ‘135.
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.
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/WILLIAM R HARP/Primary Examiner, Art Unit 3653
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