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 .
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered but they are not persuasive. Applicant has introduced various amendments to claims 1, 19, and 20, and argued that the combination of references cited in the Non-Final Rejection dated March 25, 2026 do not meet the claim limitations. The Examiner respectfully disagrees.
With respect to claim 1, Applicant has argued that Rosenthal et al., in view of Dai et al., do not teach a preservative applied to a first part, and absent from a second part as recited in claim 1. The Examiner notes that the preservative as taught by Dai et al., can be applied to the collection slide, cover pad, and/or a collection pad (paragraph 0015). Given this teaching, the Examiner contends that Dai et al., meets the claim limitation in the reference does not require a preservative present at the collection slide, cover pad, and collection pad. As such, the Examiner contends that the amended limitation is taught by the prior art. Applicant has also amended claim 1 to recite the opening in the absorbent matrix having an extension interposed between the first and second parts. The Examiner contends that the claimed “extension” is indefinite as it is unclear if Applicant is referring to the length of the through-cut/opening, or if the “extension” is an additional structural element. The Examiner notes that neither the claims, nor the specification describes what constitutes an “extension” thus the claim is unclear. Finally, the Examiner notes that the limitations of the first part being configured to receive a head of a punch, and preventing contamination by capillary flow denote the intended use of the first part and through-cut, and does not further limit the structure.
With respect to claim 19, the Examiner again notes that the phrase “preventing reciprocal contamination” indicates the intended use of the through-cut, and does not provide a further limitation of the structure of the through-cut.
With respect to claim 20, the Examiner again notes that the claimed “extension” is indefinite as neither the claims, nor the specification describes what constitutes an extension, and the Examiner is unable to determine if the “extension” refers to the length of the through-cut, or describes an additional structural element of the claim.
Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the combination of references cited below, thus the claims are not in condition for allowance.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 7, the Examiner notes that the term “punching” is sufficiently broad so as to read on any means of forming an opening in a support. The specification does not describe a means by which an opening is formed by “punching” thus the Examiner will broadly interpret the term as any means that can be utilized to make or form an opening in a support.
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, 3-6, 20, 22-25, and 27 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.
For claim 1 and 20, the Examiner contends that the claimed “extension” is indefinite as it is unclear if Applicant is referring to the length of the through-cut/opening, or if the “extension” is an additional structural element. The Examiner notes that neither the claims, nor the specification describes what constitutes an “extension” thus the claims are unclear. For the purposes of examination, any prior art reference having a through-cut as recited in claim 1 will be read as having an extension. Claims 3-6, 22-25, and 27 depend directly or indirectly from claims 1 and 20, and are also indefinite.
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.
Claim(s) 1, 3-6, 19, 20, 22-25, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rosenthal et al., (US 5,516,487) in view of Dai et al., (US 2006/0246598).
Regarding claims 1,19, 20, and 27 Rosenthal et al., teach an absorbent paper for collecting samples comprising an absorbent paper (column2 lines 28-30, column 4 lines 31-32) having a plurality of sample zones (first and second parts, column4 lines 31-36, figure 1, circles shown at #11), and a third part between, and connecting the first and second parts (area between circles, figure 1 #20) wherein the third partis provided with a slit (column 4 lines 37-38, 46-47). The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which the term “extension” is indefinite. Additionally, the Examiner notes that the first part being configured to receive a head of a punch, and the through-cut preventing contamination by capillary flow describes the intended use of the support, and do not impart structure to the claim. Rosenthal et al., do not teach a sample zone comprising a preservative chemical.
Dai et al., teach a device for sample collection and analysis comprising an absorbent transfer material having a preservative (paragraphs 0008, 0009, 0015) wherein the preservative can be placed on a collection slide, a cover pad, and/or a collection pad (paragraph 0015). Dai et al., teach that it is advantageous to provide an absorbent comprising a preservative as a means of protecting against decay, discoloration, or spoilage of a sample (paragraph 0008).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Guadagno wherein the absorbent paper comprises a preservative in order to protect against decay, discoloration, or spoilage as taught by Dai et al.
Regarding claims 3, 22, and 23, Rosenthal et al., teach a continuous absorbent made of paper (column 2 lines 28-30, column 4 lines 31-32, figure 1 #10).
Regarding claim 6, Rosenthal et al., teach a plurality of slits (column 4 lines 37-38, 46 47, figure 1 #11).
Regarding claims 4, 5, 24, and 25, Rosenthal et al., do not teach an external containing body. The Examiner notes that the limitations regarding operating conditions are conditional and not required to occur.
Dai et al., teach a device for sample collection comprising a housing having top and bottom portions (paragraph 0047, figure 1 #'s 122, 124). Dai et al., also teach the top portion of the housing having an opening (figure 1 #128). The Examiner is reading this combination as applying a known technique to a known device to yield predictable results which would have been obvious to one of ordinary skill in the art. One of ordinary skill in the art would have found it obvious to provide a housing as a means of protecting the absorbent paper after a sample is applied. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Rosenthal et al., in view of Dai et al., wherein the absorbent paper is placed inside a housing as applying a known technique to a known device to yield predictable results requires only routine skill in the art.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing 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.
/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
Prosecution Insights