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 Amendment
The Amendment filed 09/17/2025 has been entered. Claims 1-2 and 5-9 remain pending in the application. Claims 8-9 are withdrawn.
New grounds of rejections necessitated by amendments are discussed below.
Claim Interpretation
The term “ultra-thin” is being interpreted as a thickness of 20-200 nm as discussed in the specification, paragraph [0068]. See MPEP 2111.
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 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Solazzi et al. (US 20090028760 A1) in view of Zhang et al. (Hong Zhang, Y. Okamura et al., "Fluoropolymer Nanosheet as a Wrapping Mount for High-Quality Tissue Imaging," Advanced Materials 2017, 29, 1703139, August 11, 2017, vol. 29, 1703139, pages 1-6; cited in the IDS filed 12/10/2021; herein “Zhang”), Kishida et al. (US 20110085638 A1), and Mizuta (US 5253280 A).
Regarding claim 1, Solazzi teaches an observation sample covering implement (Figs. 1-6) comprising:
a thin film (Figs. 2 and 6, thin film 205) that is configured to cover an observation sample (interpreted as a functional limitation of thin film 205, see MPEP 2114; thin film 205 is structurally capable of covering an observation sample at a later time; note that the “observation sample” is not positively recited structurally);
and a main body section (Figs. 1B and 2, annual collar 150) that has a holding section (Fig. 1B, section of annual collar 150 including the area including surface 155 and towards the central axis 130) with an opening section formed therein (Figs. 1B and 2 shows an open end 175 formed in the area including surface 155 and towards the central axis 130), wherein
the thin film is formed larger than the opening section (Fig. 2 shows thin film 205 is larger than the open end 175), and
the thin film sticks by physical adsorption to at least an upper surface and part of a side surface of the holding section so as to block the opening section (note that “sticks by physical adsorption” is interpreted as a product by process limitation, see MPEP 2113, wherein even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself; Fig. 2 shows the thin film 205 coupled to at least an upper surface 155 and part of a side surface of the annual collar 150 since thin film 205 is in contact with the upper and side surfaces of the thin film 205, and thin film 205 blocks the open end 175, thus the product is the same as the claimed invention), and is held on the holding section (Fig. 2 shows thin film 205 is held on the upper surface 155 of annual collar 150),
wherein the holding section includes a stepped section (Figs. 1B and 2 shows annual collar 150 having a stepped section, i.e. annular member 170, which is a section that steps upwards from surface 155 along inner peripheral surface that includes element 165) that forms a recess on an upper surface side (Figs. 1B and 2 shows a recess from the top of element 150 of the annual collar 150 towards the upper surface side 155, i.e. a recess on an upper surface side of element 150) where the thin film is held (Fig. 2 shows thin film 205 is held on the recess of element 150, i.e. recess that comprises surface 155), and
the stepped section is formed on an outer peripheral side of the holding section outside the opening section (Figs. 1B and 2 shows annual collar 150 having a stepped section, i.e. annular member 170, which is a section that steps upwards from surface 155 along inner peripheral surface that includes element 165, which is formed on an outer peripheral side of annual collar 150 outside the open end 175), and
the opening section is opened to a bottom surface of the recess (Figs. 1B and 2 shows the open end 175 at the central portion of annual collar 150 is opened to a bottom surface of the recess on an upper surface side of annual collar 150), wherein
the thin film covers and is in direct contact with the upper surface of the holding section (Fig. 2 shows thin film 205 contacting and covering a part of the upper surface, i.e. surface 155, of the section of annual collar 150 including the area including surface 155 and towards the central axis 130), an inner side surface of the stepped section (Fig. 2 shows thin film 205 covering a part of an inner side surface, i.e. surface 165, of the stepped section, i.e. element 170), and a top surface of the stepped section (Fig. 2 shows thin film 205 covering a part of a top surface of the stepped section, i.e. element 170).
While Solazzi teaches the thin film is flexible and transparent to radiant energy use din spectrochemical analysis (paragraph [0015]), Solazzi fails to teach the film is an ultra-thin film (the term “ultra-thin” is being interpreted as a thickness of 20-200 nm as discussed in the specification, paragraph [0068]; See MPEP 2111); the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section, an entirety of the inner side surface of the stepped section, and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section.
Zhang teaches an observation sample covering implement (Fig. 3) comprising: an ultra-thin film (Fig. 3, “nanosheet”; abstract teaches 133 nm thick CYTOP nanosheet) that covers an observation sample (Fig. 3 shows the nanosheet wrapping a brain slice, i.e. an observation sample); and a main body section (Fig. 3, interpreted as comprising the dish and coverslip) that has a holding section (Fig. 3, interpreted as the section or portion of the dish) with an opening section formed therein (Fig. 3 shows the dish has an opening section under the coverslip), wherein the ultra-thin film is formed larger than the opening section (Fig. 3 shows the nanosheet is wider or larger than the opening of the dish), and the ultra-thin film sticks by physical adsorption to at least an upper surface and part of a side surface of the holding section so as to block the opening section (note that “sticks by physical adsorption” is interpreted as a product by process limitation, see MPEP 2113, wherein even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself; Fig. 3 shows the nanosheet coupled to at least the upper surface and side surface of the opening of the dish since the nanosheet wraps around the cover slip, thus the product is the same as the claimed invention of the ultra-thin film stuck or fixed to the upper surface and part of a side surface of the dish; page 5, right column, section “Preparation of Cleared Brain Slices…” teaches the CYTOP nanosheet are bonded to the bottom dish with nail enamel, i.e. sticks by physical adsorption via nail enamel), and is held on the holding section (Fig. 3 shows the nanosheet is held on the dish). Zhang teaches the use of CYTOP ultra-thin film, i.e. nanosheets, with adjustable transparency (abstract). Zhang teaches CYTOP has a high optical transmittance and has shown superiority in building transparent windows for liquid microlenses (page 2, left column, first full paragraph).
Since Zhang teaches a thin film that is transparent for optical analysis, similar to Solazzi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the thin film of Solazzi to incorporate the teachings of an ultra-thin film of Zhang (abstract; page 2, left column, first full paragraph) to provide the film is an ultra-thin film. Doing so would have a reasonable expectation of successfully improving transparency and/or transmittance of the film as taught by Zhang (abstract; page 2, left column, first full paragraph).
Modified Solazzi fails to teach: the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section, an entirety of the inner side surface of the stepped section, and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section.
Kishida teaches a sample cell that is sealed with an x-ray transmission sheet (abstract). Kishida teaches a thin film (Figs. 32 and 33, X-ray transmission sheet 22; paragraph [0120]) held on a cell supporting member (21), wherein the cell supporting member comprises an opening section (center of element 21), and a stepped section (Fig. 33 shows a section of cell supporting member 21 that has a step from the central area towards the top of element 21). Kishida teaches the thin film (Fig. 33, element 22) covers an entirety of a top surface of the stepped section (Fig. 33, element 22 covers the top surface of the stepped section of element 21) and at least a part of an outer surface of the stepped section (Fig. 33 shows element 22 covering and wrapping around the top surface of element 21 on the outer surface adjacent to element 23). Kishida teaches fixing the thin film (22) to cell supporting member (21) provides a sample cell assembly instrument capable of preventing the occurrence of a cockle in an X-ray transmission sheet when a sample cell is assembled (paragraphs [0012],[0131]). Kishida teaches an embodiment (Fig. 34), wherein the thin film (102) covers an entirety of an inner side surface of a supporting member (Fig. 34 and paragraph [0136] teaches X-ray transmission sheet 102 contacts the inner side surface of a supporting member). Kishida teaches an embodiment (Fig. 2) comprising a sheet (paragraph [0075] and Fig. 2; sample cup 11 formed of a flexible plastic film or sheet) that covers an entirety of an top surface of a section (Fig. 2 shows element 11 covering an entirety of a top surface of element 103) and an entirety of the inner side surface of the section (Fig. 2 shows element 11 covering an entirety of an inner side surface of element 103), wherein the arrangement of the sheet (11) and the section (103) allows for the elements to be firmly held (paragraph [0079]).
Since Kishida teaches a thin film that covers an opening for optical analysis, similar to modified Solazzi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the ultra-thin film of modified Solazzi to incorporate Kishida’s teachings of a thin film that covers an entirety of a top surface of a stepped section and a part of an outer surface of a supporting member (Figs. 32-33), an embodiment of a thin film covering an entirety of an inner side surface of a supporting member (Fig. 34), and an embodiment of a sheet covering an entirety of a top surface of a section and an entirety of an inner side surface of the section (Fig. 2) to provide: the ultra-thin film covers and is in direct contact with an entirety of the inner side surface of the stepped section and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section. Doing so would have a reasonable expectation of successfully improving sealing, fixing, and attachment of the ultra-thin film to the holding section as taught by Kishida (paragraphs [0012], [0079], [00131]).
Modified Solazzi fails to teach: the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section.
Kishida teaches embodiments where a film covers and is in direct contact with an entirety of an upper surface of a holding section (Fig. 2 shows film 11 on the upper surface of element 103; Fig. 20 shows film 18 on the upper surface of element 103; Fig. 25 shows film 18 wrapped around the holding section 101 and is contacting and covering the entire upper surface of element 101). Kishida teaches wrapping and fixing a sheet around an upper surface and on the outer side surface of a holding section (Fig. 33; paragraph [0135]). Kishida teaches the arrangement of the sheet (11) and the section (103) allows for the elements to be firmly held (paragraph [0079]).
Mizuta teaches a fluorescent X-ray analyzer (abstract; Figs. 1-3) comprising an X-ray transmissive sheet (27) that covers and directly contacts an entirety of an upper surface of a holding section (Figs. 1-3 shows sheet 27 covering and contacting an entirety of an upper surface of outer frame 25, i.e. the upper surface of element 25 between elements 26 and 25; the upper surface of the holding section is interpreted as the upper surface of element 25 between elements 26 and 25). Mizuta teaches the X-ray transmissive sheet 27 is stretched or extended by the stand inner frame 26 so that it is not crumpled or formed with any crease between the stand inner frame 26 and the stand outer frame 25 (column 5, lines 1-5).
Since Mizuta teaches holding a thin film between elements, similar to modified Solazzi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the ultra-thin film of modified Solazzi to incorporate Mizuta’s teachings of a sheet that covers an entirety of an upper surface of a holding section (Figs. 1-3) and the teachings of a film contacting and covering an entire upper surface of a holding section of Kishida (Figs. 2, 20, 25,33; paragraph [0135]), to provide: the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section. Doing so would have a reasonable expectation of successfully improving holding an extension of the ultra-thin film on and around the upper surface of the holding section as discussed by Mizuta (column 5, lines 1-5), thus improving securing of the film around the holding section.
Furthermore, the claimed limitations are obvious because all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements (i.e. the claimed ultra-thin film covering and in direct contact with an entirety of an upper surface of a section, an entirety of an inner side surface and top surface of a stepped section, and a part of an outer surface of the stepped section) by known methods with no change in their respective functions (i.e. attachment and fixing of a ultra-thin film with an implement), and the combinations yielded nothing more than predictable results (i.e. providing the ultra-thin film directly contacting and covering the surfaces of the holding section and stepped section as claimed would yield nothing more than the obvious and predictable result of improving sealing, fixing, and attachment of the ultra-thin film to the holding section). See MPEP 2143(A).
Regarding claim 6, Solazzi further teaches the observation sample covering implement according to claim 1, further comprising at least one of a lid section (Fig. 2, cell 100) that covers the upper surface side (Fig. 2 shows cell 100 covering the upper surface side, i.e. surface 155) and a receiving section that covers a lower surface side of the holding section (interpreted as not required due to the “at least one of” statement).
Regarding claim 7, note that “observation sample” is not positively recited structurally and is interpreted as a functional limitation of the claimed observation sample covering implement. A claim is only limited by positively recited elements; thus, inclusion of the material or article (observation sample) worked upon by a structure (observation sample covering implement) being claimed does not impart patentability to the claims (see MPEP 2115). Thus, Solazzi teaches all of the limitations of claim 7. Additionally, the opening section (Figs. 1B and 2, open end 175) is interpreted as being formed larger than an observation sample.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Solazzi in view of Zhang, Kishida, and Mizuta as applied to claim 1 above, and further in view of Izapy et al. (US 20130344579 A1; cited in the Office Action filed 12/12/2024).
Regarding claim 2, Solazzi further teaches wherein the main body section (Figs. 1B and 2, annual collar 150) includes
a plate section (Fig. 1B, interpreted as the section including surface 155 and flange 160) in which the holding section is composed of a plate material (Fig. 1B and paragraph [0012] teaches the section including surface 155 and flange 160 is composed of a material, such as plastic, i.e. plate material) and a through hole is formed in the plate material to form the opening section (Figs. 1B and 2 shows open end 175 is a through hole formed in the surface 155 and flange 160 of annular collar 150), and
a wall section that is provided by extending upward from an outer periphery section of the plate section (Figs. 1B and 2 shows a wall section, i.e. annular member 170, extending upward from an outer periphery section of the section including surface 155 and flange 160).
Modified Solazzi fails to teach a wall section that is provided by extending downward from an outer periphery section of the plate section.
Izapy teaches an imaging chamber comprising a dish (abstract; Figs. 1-2). Izapy teaches the chamber (Figs. 1-2) comprises a main body section (1) includes a plate section in which the holding section is composed of a plate material (Fig. 2, element 12) and a through hole is formed in the plate material to form the opening section (Fig. 2, through hole formed through dish 1 between element 12, which is adjacent to coverslip 10), and a wall section (Figs. 1-2, side walls of dish 1) that is provided by extending upwards and downwards from an outer periphery section of the plate section (Fig. 2 shows the side walls of dish 1 extending upwards towards element 14 and extending downwards as a protruding annular rib 11). Izapy teaches the dish has a protruding annular rib (shoulder) 11 around its outer diameter, which lifts the glass bottom in order to prevent scratching of the cover slip 10 and enables to pile the chamber on the top of another chamber (paragraph [0021]). Izapy teaches the bottom of the dish is provided with a coverslip to be used in microscopy (abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the wall section of modified Solazzi to incorporate the teachings of a dish with a protruding rib (Fig. 2; paragraph [0021]) to provide the wall section that is provided by extending downward from an outer periphery section of the plate section. Doing so would have a reasonable expectation of successfully lifting the bottom of the main body to prevent scratching of the bottom and to enable piling or stacking of the implement (Izapy; paragraph [0021]) to improve storage and handling.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Solazzi in view of Zhang, Kishida, and Mizuta as applied to claim 1 above, and further in view of Okubo et al. (US 20070279573 A1).
Regarding claim 5, while Solazzi teaches the main body is made of plastic (paragraph [0012]) and the presence of liquid samples (paragraph [0015]), Zhang teaches a main body section is made of glass (page 5, right column, section “Preparation of Cleared Brain Slices…” teaches the dish is glass), and Kishida teaches a cell holder or supporting member is made of metal or resin (paragraphs [0074],[0080],[0118],[0132]), modified Solazzi fails to teach: wherein the main body section is made of metal, glass, or resin, and the main body section is insoluble in one solvent selected from the group consisting of aqueous solvents and organic solvents.
Okubo teaches a microcell used in analysis of liquid samples (abstract). Okubo teaches a circular plate made of solvent-resistant material, such as resin (paragraph [0058]), wherein the plate comprises holes (paragraph [0058]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the main body section of modified Solazzi to incorporate the teachings of a solvent-resistant material, such as resin, of Okubo (paragraph [0058]) to provide wherein the main body section is made of metal, glass, or resin, and the main body section is insoluble in one solvent selected from the group consisting of aqueous solvents and organic solvents. Doing so would have a reasonable expectation of successfully improving the resistant of the main body section to potential solvents during sample analysis, thus improving durability of the overall observation sample covering implement.
Response to Arguments
Applicant's arguments filed 09/17/2025, with the respect to the rejections under 35 U.S.C. 103, see pages 5-13, have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references to arrive at the limitations of: “the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section, an entirety of the inner side surface of the stepped section, and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section” of claim 1, since Mitzuta shows end portions of the sheet 27 is elevated above a surface of outer frame 25, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Solazzi in view of Kishida are used to arrive at the claimed limitation of “the ultra-thin film covers and is in direct contact with an entirety of the inner side surface of the stepped section and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section”. Kishida provides teachings of a thin film that covers an entirety of a top surface of a stepped section and a part of an outer surface of a supporting member (Figs. 32-33), an embodiment of a thin film covering an entirety of an inner side surface of a supporting member (Fig. 34), and an embodiment of a sheet covering an entirety of a top surface of a section and an entirety of an inner side surface of the section (Fig. 2). Kishida also provides motivation of: the arrangement of the sheet (11) and the section (103) allows for the elements to be firmly held (paragraph [0079]).
Therefore, it would have been obvious to one of ordinary skill in the art to have modified the ultra-thin film of modified Solazzi to incorporate Kishida’s teachings of a thin film that covers an entirety of a top surface of a stepped section and a part of an outer surface of a supporting member (Figs. 32-33), an embodiment of a thin film covering an entirety of an inner side surface of a supporting member (Fig. 34), and an embodiment of a sheet covering an entirety of a top surface of a section and an entirety of an inner side surface of the section (Fig. 2) to provide: the ultra-thin film covers and is in direct contact with an entirety of the inner side surface of the stepped section and an entirety of the top surface of the stepped section and a part of an outer surface of the stepped section. Doing so would have a reasonable expectation of successfully improving sealing, fixing, and attachment of the ultra-thin film to the holding section as taught by Kishida (paragraphs [0012], [0079], [00131]).
Solazzi in view of Kishida and Mizuta are used to arrive at the claimed limitation of: “the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section.”
Mizuta provides teachings of a sheet that covers an entirety of an upper surface of a holding section (Figs. 1-3). Kishida provides teachings of a film contacting and covering an entire upper surface of a holding section (Figs. 2, 20, 25,33; paragraph [0135]), and motivation of the arrangement of the sheet (11) and the section (103) allows for the elements to be firmly held (paragraph [0079]).
Therefore, it would have been obvious to one of ordinary skill in the art to have modified the ultra-thin film of modified Solazzi to incorporate Mizuta’s teachings of a sheet that covers an entirety of an upper surface of a holding section (Figs. 1-3) and the teachings of a film contacting and covering an entire upper surface of a holding section of Kishida (Figs. 2, 20, 25,33; paragraph [0135]), to provide: the ultra-thin film covers and is in direct contact with an entirety of the upper surface of the holding section. Doing so would have a reasonable expectation of successfully improving holding an extension of the ultra-thin film on and around the upper surface of the holding section as discussed by Mizuta (column 5, lines 1-5), thus improving securing of the film around the holding section.
Furthermore, the claimed limitations are obvious because all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements (i.e. the claimed ultra-thin film covering and in direct contact with an entirety of an upper surface of a section, an entirety of an inner side surface and top surface of a stepped section, and a part of an outer surface of the stepped section) by known methods with no change in their respective functions (i.e. attachment and fixing of a ultra-thin film with an implement), and the combinations yielded nothing more than predictable results (i.e. providing the ultra-thin film directly contacting and covering the surfaces of the holding section and stepped section as claimed would yield nothing more than the obvious and predictable result of improving sealing, fixing, and attachment of the ultra-thin film to the holding section). See MPEP 2143(A).
Thus, there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to have modified the ultra-thin film to cover and directly contact the surfaces of the holding section and stepped section as claimed in order to improve sealing, fixing, and attachment of the ultra-thin film to the holding section.
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 HENRY H NGUYEN whose telephone number is (571)272-2338. The examiner can normally be reached M-F 7:30A-5:00P.
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/HENRY H NGUYEN/Primary Examiner, Art Unit 1758