www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/439,890
`
`09/16/2021
`
`Hisato NAKAJIMA
`
`WASHM-65082
`
`7795
`
`pysine
`
`RI
`PEA
`PEARNE & GORDON LLP
`1801 EAST 9TH STREET
`SUITE 1200
`CLEVELAND,OH 44114-3108
`
`WRIGHT, PATRICIA KATHRYN
`
`1798
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`01/31/2024
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`patdocket@ pearne.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-8 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C] Claim(s)
`is/are allowed.
`Claim(s) 1-8 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:/Awww.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)2 The specification is objected to by the Examiner.
`11) The drawing(s)filed on 9/16/2021 is/are: a)C] accepted or b) objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[¥) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`c)Z None ofthe:
`b)() Some**
`a) All
`1.1.) Certified copies of the priority documents have been received.
`2.1) Certified copies of the priority documents have been received in Application No.
`3.4% Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20240118
`
`Application No.
`Applicant(s)
`17/439,890
`NAKAJIMA, Hisato
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`P. Kathryn Wright
`1798
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)C) Responsive to communication(s) filed on
`CA declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon
`
`2a)C) This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)() Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
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`The present application, filed on or after March 16, 2013, is being examined
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`underthe first inventor to file provisions of the AIA.
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`Drawings
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`2.
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`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
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`every feature of the invention specified in the claims. Therefore, “the “first end of the
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`second channel’ and “second end of the second channel’ must be shownor the
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`feature(s) canceled from the claim(s). No new matter should be entered.
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`3.
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`Figure 6 should be designated by a legend suchas --Prior Art-- because only
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`that whichis old is illustrated. See MPEP § 608.02(g).
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`4.
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`Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in
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`reply to the Office action to avoid abandonmentof the application. Any amended
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`replacement drawing sheet should includeall of the figures appearing on the immediate
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`prior version of the sheet, even if only one figure is being amended. Thefigure or figure
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`number of an amended drawing should not be labeled as “amended.” If a drawing figure
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`is to be canceled, the appropriate figure must be removed from the replacement sheet,
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`and where necessary, the remaining figures must be renumbered and appropriate
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`changes madeto the brief description of the several views of the drawings for
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`consistency. Additional replacement sheets may be necessary to show the renumbering
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`of the remaining figures. Each drawing sheet submitted after the filing date of an
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`application must be labeled in the top margin as either “Replacement Sheet” or “New
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`Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner,
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 3
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`the applicantwill be notified and informed of any required corrective action in the next
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`Office action. The objection to the drawings will not be held in abeyance.
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`Claim Rejections - 35 USC § 112
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`5.
`
`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-AlA), 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.
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`6.
`
`Claim 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
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`second paragraph, as being indefinite for failing to particularly point out and distinctly
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`claim the subject matter which the inventor or a joint inventor (or for applications subject
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`to pre-AlA 35 U.S.C. 112, the applicant), regards as the invention.
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`Claim 1 recites the second channelis separated from the first channel. It is not
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`clear what applicant means by “separated”. The claim would include a separation step.
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`The examiner assumes applicant means “the second channelis separate from the first
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`channel’.
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`Claim 2 recites the second channelis disposed in such a way that a second end
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`of the second channelis closer to the syringe than the two groovesare. It is not clear
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`along whataxis the second end of the second channel and groovesis determined to be
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`“closer to” the syringe. This is confusing and indefinite.
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`Regarding claims 2 and 3, recite the phrase "in such a way", which renders the
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`claim indefinite becauseit is unclear whetherthe limitations following the phrase are
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`part of the claimed invention.
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 4
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`Claim Rejections - 35 USC § 103
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`7.
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`In the event the determination of the status of the application as subject to AIA 35
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`U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103)is incorrect, any
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`correction of the statutory basis (i.e., changing from AIA to pre-AlA) for the rejection will
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`not be considered a new ground ofrejection if the prior art relied upon, and the rationale
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`supporting the rejection, would be the same undereither status.
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`8.
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`The following is a quotation of 35 U.S.C. 103 which forms the basisfor all
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`obviousnessrejections 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 effectivefiling 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.
`
`9.
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`The factual inquiries for establishing a background for determining obviousness
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`under 35 U.S.C. 103 are summarized asfollows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence presentin the application indicating
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`obviousness or nonobviousness.
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`10.
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`Claims 1-8, as best understood, are rejected under 35 U.S.C. 103 as being
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`unpatentable overLeibfried (US 2007/0177986) in view of Koji et al., (JP 2010025804;
`
`hereinafter “Koji’-already of record).
`
`Asto claim 1, Leibfried teaches a dispensing apparatus, comprising:
`
`a syringe (part of dosing pump 22; see Fig. 1);
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 5
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`a piston that movesinside the syringe (part of dosing pump 22; see Fig. 1); and
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`a tip connection part (11; see para [0049] et seq.) that connects the syringe with
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`a tip (20 may be a disposable pipette; see para [0026] et seq.),
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`wherein the tip connection part includes
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`a first channel (hoses containing system medium 24; see para [0049] et
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`seq.) that extends in a moving direction of the piston, wherein thefirst channel
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`passes through the tip connection part (see Fig. 1),
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`a second channel (t-shaped part connected with pressure sensor 21)
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`separated from the first channel, andafirst end of the second channelis
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`exposed betweenthe two grooves.
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`Leibfried teachesthe tip connection part includes two extensions providedall
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`aroundthe side surface of the front edge of the tip connection port and extending
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`outward suchthatthe first end of the second channel 21 is disposed between to the two
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`extensions (interpreted as the second channel is placed between the two extensions).
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`The two extensions being separated from each otherin an insertion direction of the tip
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`20. The front edge portion of the tip connection part being a portion to which the tip is to
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`be attached. See examiner modified Fig. 1 below pointing out the extensions.
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 6
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`However, Leibfried does not explicitly teach these extensions are formed by a
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`groovein which an elastic O-ring is placed to connect the tip connection part to the tip.
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`However, the formation of extensions by a groove 57 and O-ring 70 to elastically
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`connect elements in dispensing apparatus is well known, as shownin Fig. 6 of Koji.
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`Thus, it would have obvious to form the extensions of Leibfried from removable
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`components such asan elastic O-ring in a groove, as taught by Koji, so that at least the
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`elastic elements maybe replaceable should they become deteriorated between
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`repeated attachment and detachment.
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`As to claim 2, Leibfried teaches the second channel suchthat the that a second
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`end of the second channel(corresponds the t-shaped part of the channel 21) is closer
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`to the syringe 22 than the two groovesare(see Fig. 1).
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`As to claim 3, Leibfried teaches the second channelis disposed in such a way
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`that the second end does notinterfere with the tip whenthe tip is attached to thetip
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`connection part (see Fig. 1).
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`As to claims 4-8, Leibfried and Koji teach a pressure generator (pump), a valve
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`(implicit used for switch pump on/off; see para [0010], a pressure detector 21, anda
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`controller 23. Note the functional/processrecitation “wherein the controller controls the
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`valve so as to apply a positive pressure or a negative pressure from the second endof
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`the second channel into the second channel, the pressure detector detects a pressure
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`in the second channel, and the controller determines an attachmentstate of the tip
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`based on the pressurein the second channel measured by the pressure detector’. Has
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`not received patentable weight because the functional language does not add any
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`further structure to an apparatus beyond a capability. Apparatus claims must distinguish
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
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`Page 7
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`overthe prior art in terms of structure rather than function (see MPEP 2114). Therefore,
`
`if the prior art structure is capable of performing the function, then the prior art meets
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`the limitation in the claims. For apparatus claims, if the prior art structure is capable of
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`performing the intended use, then it meets the claim. Apparatus claims must be
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`structurally distinquishable from the prior art in terms of structure, not function. The
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`mannerof operating an apparatus doesnotdifferentiate an apparatus claim from the
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`priorart, if the prior art apparatus teachesall of the structural limitations of the claim
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`(see MPEP § 2114 & § 2173.05(g)).
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`The examiner recommends applicant recites “a controller programmedto”
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`perform the method stepsrecited in claims 4-8 in order to receive patentable weight.
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`Citationsto art
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`11.
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`In the abovecitations to documentsin the art, an effort has been made to
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`specifically cite representative passages, howeverrejections are in reference to the
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`entirety of each document relied upon. Other passages, not specifically cited, may
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`apply as well.
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`12.
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`Noclaims are allowed.
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`Conclusion
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`13.|The prior art made of record and notrelied upon is considered pertinent to
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`applicant's disclosure include Dorenkott et al., (US 6,158,269) which teachit is well
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`knownin the art to use a pressure transducer to sense pressure changes whichresult
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`from a numberof other events including but notlimited to: (a) fluid leaks in a fluid path;
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`(6) aspiration through the sample probe; (c) obstruction of a sample probetip; and (d)
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`attachment and detachmentof a sample tip to a sample probe.
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
`
`Page 8
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`14.—Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to P. Kathryn Wright whose telephone number is (571)272-
`
`2374. The examiner can normally be reached on Monday-Thursday 6:30am-4pm EST.
`
`Examinerinterviews are available via telephone and video conferencing using a
`
`USPTO supplied web-based collaboration tool. To schedule an interview, applicantis
`
`encouraged to use the USPTO Automated Interview Request(AIR) at
`
`http://www.uspto.gov/interviewpractice.
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`E-mail communication Authorization
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`15.
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`Per updated USPTOInternet usage policies, Applicant and/or applicant’s
`
`representative is encouragedto 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, | hereby authorize the USPTO to
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`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. | understand that a copy of these communications will be made of record in the application file.
`
`Written authorizations submitted to the Examinervia 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 correspondencewill be placed in the
`
`patent application when appropriate. E-mails from the USPTOarefor the sole use of
`
`the intended recipient, and may contain information subject to the
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`confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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`

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`Application/Control Number: 17/439,890
`Art Unit: 1798
`
`Page 9
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`16.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Jill A Warden can be reached on 571-272-1267. The fax phone numberfor
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`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`17.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
`
`center for more information about Patent Center and
`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling in DOCX format. For
`
`additional questions, contact the Electronic Business Center (EBC) at 866-217-9197
`
`(toll-free). If you would like assistance from a USPTO Customer Service
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/P. Kathryn Wright/
`Primary Examiner, Art Unit 1798
`
`