DETAILED ACTION
Response to Amendment
Examiner acknowledges Applicant’s response filed 26 January 2026 containing amendments to the claims and remarks.
Claims 1-4 and 6-20 are pending. Claims 15-20 are withdrawn as being directed to a non-elected invention. Consequently, only claims 1-4 and 6-14 are pending for examination.
The previous rejections under 35 U.S.C. 102 and 35 U.S.C. 103 are withdrawn in view of Applicant’s amendments to the claims.
New grounds for rejection of claims 1-4 and 6-14, necessitated by Applicant’s amendments to the claims, are entered under 35 U.S.C. 103. The rejections follow.
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.
Claims 1-3, 6, 7, 10, 11, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Tacha (US 9,945,763) (“D1” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407) in view of Angros-2 (US 2010/0068757) (“D5” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407)).
With respect to claims 1-3, 6, 7, 10, 11, 13, and 14, Tacha and Angros-2 discloses or suggests the elements of such claims as discussed in the cited IPR. With respect to the newly added “seal body” limitation, Tacha discloses wherein the lid or pressure chamber may be sealable with a sealing gasket (i.e. “seal body”) (see Tacha, column 6, lines 34-35; and column 19, lines 53-55).
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Tacha (US 9,945,763) (“D1” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407) in view of Angros-2 (US 2010/0068757) (“D5” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407)) and Angros-1 (US 2018/0017471) (“D2” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407).
With respect to claims 8 and 9, see discussion supra at paragraph 9.
Claims 4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Tacha (US 9,945,763) (“D1” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407) in view of Angros-2 (US 2010/0068757) (“D5” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407)) and Cappi (EP 3427829 A1) (“D3” as indicated in the “International Preliminary Report on Patentability” (“IPR”) issued 16 November 2021 in corresponding international application PCT/EP2020/063407).
With respect to claims 4 and 12, see discussion supra at paragraph 9.
Response to Arguments
Applicant’s arguments filed 26 January 2026 have been fully considered but they are not persuasive.
Examiner understands Applicant’s arguments to be:
The key to supporting any prima facie conclusion of obviousness is the clear articulation of reasons why the claimed invention would have been obvious.
The Office fails to provide a satisfactory explanation as to why there would have been a reasonable expectation of success in arriving at the claimed invention after combining the various components of Tacha and Angros-2.
Even if the references were combined in the manner suggested by the IPR, the combination fails to disclose all of the elements of the claimed system including that “at least one of the lower plate and the upper plate further comprises at least one seal body.”
Angros-2 does not describe the advantages or disadvantages of pressurization by steam, nor list any “steam injection ports” for pressurization by steam, and thus there is no motivation for the skilled artisan to look to Angros-2 to modify the teachings of Tacha to arrive at the claimed system.
The skilled artisan would have no motivation to combine Tacha and Angros-2 given the differences in slide processing capabilities.
In response to Applicant’s first, second, third, and fifth arguments, both Tacha and Angros-2 are directed to systems for the handling of biological samples, e.g. antigen (see Tacha, column 1, lines 12-15) (see Angros-2, paragraph [0003]), and thus are considered analogous art and there would therefore be a reasonable expectation of success in combining the features of one with the system of the other. With respect to the “seal body limitation,” Tacha clearly discloses wherein “[a] lid [upper plate] may be sealable perhaps with a sealing gasket or the like” (see Tacha, column 6, lines 34-35) and “a sealing gasket [ ] may seal the pressure chamber [forming the lower plate] from pressure loss as well as the outer housing from incidental moisture” (see Tacha, column 19, lines 53-55).
With respect to Applicant’s fourth argument, Angros-2 clearly indicates that steam may be used to pressurize a reaction compartment, such steam being delivered by external means such as a pressure duct or conduit (see Angros-2, paragraph [0141]). Obviousness does not require absolute predictability, only a reasonable expectation of success. In re O’Farrell, 853 F.2d 894, 903 (Fed. Cir. 1988).
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Randy Boyer/
Primary Examiner, Art Unit 1771
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