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 .
Remarks
This office action fully acknowledges Applicant’s remarks and amendments filed on 13 November 2025.
Claims 1, 3, 7, 9-10, 12, 15, 17, 21, 33-38, 40-41, and 44-46 are pending.
Claims 2, 4-6, 8, 11, 13-14, 16, 18-20, 22-32, 39, and 42-43 are cancelled.
Claims 33-38 and 40-41 are withdrawn from consideration.
Claims 44-46 are newly added.
Claim Objections
Claim 1 is objected to because of the following informalities: The claim recites “the substrate is configured to” and should be amended to recite “the substrate is configured to”. Appropriate correction is required.
Claim Interpretation
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior 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 limitations are:
“a fluid power module...configured to be controlled by the control device to control the liquid to flow out from the liquid storage device...” as in Claim 3.
“an adsorption device...configured to adsorb the substrate...” as in Claim 10.
“a liquid removal device...configured to remove the liquid remaining on the substrate...” as in Claim 15.
“a flattening device...configured to flatten the liquid...” as in Claim 17.
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.
“a pump” as in para. [0106] of Applicant’s instant pre-grant publication US 2022/0397585 A1...and equivalents thereof.
“an object plane” as in para. [0115] of Applicant’s instant pre-grant publication US 2022/0397585 A1...and equivalents thereof.
“a dryer and/or a scraper” as in para. [0020] of Applicant’s instant pre-grant publication US 2022/0397585 A1...and equivalents thereof.
“a scraper” as in in para. [0022] of Applicant’s instant pre-grant publication US 2022/0397585 A1...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.
Claim Rejections - 35 USC § 112
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 7, 9-10, 12, 15, 17, 21, and 44-46 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.
Further, Claim 1 recites “the sample carrier”; this limitation does not have antecedent basis in the claim. The claim recites “a reaction platform configured to carry a sample carrier”. As such, the limitation “the sample carrier” is not positively recited and required as an element of the liquid transfer device, but is rather merely only inferentially related to the device by way of a capability of the reaction platform. Dependents thereof Claim 1 are further rejected by virtue of their dependency. Claim 1 requires “transfer the liquid with the sample carrier on the reaction platform”, thereby requiring the physical presence of the sample carrier for such utilization.
Claim 3 recites “a valve device” wherein this element is not structurally or functionally related to any other element of the device and is thereby indefinitely arranged within the device, provided as a mere part listing. Does the valve device regulate the liquid to flow out from the liquid storage device?
Claim 7 recites “two of the plurality of reaction reagents distributed in a front and a back of the substrate are connected by the buffer reagent” wherein it is unclear the requirements of “connected by the buffer reagent” as the buffer reagent would also be required to be on the same side as the reagents to provide a connection and would be assumed to merge with physically interfacing droplets to form a single joined mixture. Further, it is unclear what structure constitutes the “connection” as it is unconventional to describe a plurality of liquids as being “connected”. Does Applicant intend that the buffer and reagents are together in solution? Or does Applicant intend that droplets of buffer be in fluid communication with reagent droplets, either through the substrate or adjacent to one another? Are the solutions immiscible and separated by connection/interfacing with a spacer fluid? Clarification is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 10, 12, 15, and 46, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zahniser et al. (US PAT 4,395,493 A), hereinafter “Zahniser”.
Regarding Claim 1, Zahniser teaches a liquid transfer device 10 comprising:
a reaction platform 65 configured to carry a sample carrier 64 (Fig. 1 and [col. 3, line 29]: “a slide 64 is mounted by a slide holder 65”);
a substrate 34 (Fig. 1 and [col. 3, line 27]: “the tape 34 having the cells deposited thereon”);
a driving device 54/56/58 comprising a winding device 56 and an unwinding device 58 spaced apart from each other, wherein the winding device comprises a winding roller 56, the unwinding device comprises an unwinding roller 58, the substrate 34 is wound on the winding roller 56 and the unwinding roller 58 (Fig. 1 and [col. 3, line 21]: “The motor 54 turns a reel 56 so as to wind up the tape 34. The tape 34 is initially wound around a reel 58. Hence, the tape 34 unwinds from the reel 58...”); and
a liquid arrangement device comprising a liquid outlet mechanism 44, and the liquid outlet mechanism comprising a die head 28/32 (Fig. 1 and [col. 2, line 44] “a sample suspension containing a known number of cells will be provided from a nozzle 27 of the cell sensor 20 to an application vessel 28...The application vessel 28 has a rectangular window 32 at its bottom which opens onto and is in contact with a filter strip or tape 34. More specifically, the tape 34 closes the window 32 and the application vessel 28 and the tape 34 rest upon a drain 36 having a top 38. The top 38 has a corresponding rectangle configuration to mate with the rectangular window 32, so as to form a water tight seal. While the sample suspension is entering the vessel 28 or after the total volume of the sample suspension enters the vessel 28, the control unit 26 enables a vacuum source 40 to provide a suction in the drain 36. This negative pressure sucks the liquid of the sample suspension through the tape 34 in the direction of arrow 42, so that the cells remain on the upper surface of the tape 34.”),
wherein the driving device 54/56/58 is configured to rotate to pull the substrate 34 to pass over the die head 28/32 and the reaction platform 65 (Fig. 1 and [col. 3, line 14]: “Alternatively, the drain 36 can be lowered and the negative pressure of the vacuum source 40 maintained, so that the tape 34 is pulled downward from the vessel 28.” – [col. 3, line 21]: “The motor 54 turns a reel 56 so as to wind up the tape 34.” – [col. 4, line 61]: “transfer of cells to the slide 64”, slide 64 is held by reaction platform 65.),
the die head 28/32 is configured to dispose liquid on the substrate 34 during the substrate 34 passing over the die head 28/32 (Fig. 1 and [col. 2, line 44]: “a sample suspension containing a known number of cells will be provided from a nozzle 27 of the cell sensor 20 to an application vessel 28...The application vessel 28 has a rectangular window 32 at its bottom which opens onto and is in contact with a filter strip or tape 34. More specifically, the tape 34 closes the window 32 and the application vessel 28 and the tape 34 rest upon a drain 36 having a top 38.”),
the substrate 34 is configured to transfer liquid with the sample carrier 64 on the reaction platform 65 during the substrate passing over the reaction platform, and the substrate without the liquid is configured to wipe off an original liquid on the sample carrier during the substrate passing over the reaction platform ([col. 3, line 52]: “the cells are transferred from the tape 34 to the slide 64” – col. 3, line 33: “After the tape 34 has been advanced, the control unit 26 by way of a conductor 72 will enable a motorized gear assembly 74 to press the hard sponge 66 against the tape 34, thereby pressing the tape 34 against the slide 64. Prior to this step a fixative was spread over the sponge 66. Hence, the fixative is in turn applied to the cells, which not only fixes the cells, but helps them to adhere to the slide 64.” – This transfer to the slide is interpreted as the “wiping off” given its commensurate fluid transfer.),
as in Claim 1.
Regarding Claim 10, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the liquid transfer device further comprises an adsorption device 38/40 (Fig. 1),
wherein the adsorption device 38/40 is disposed on a side of the substrate 34 away from the reaction platform 32 (Fig. 1 shows the vacuum source 40 as on the other side of the tape 34 as the reaction platform 28/32.),
and the adsorption device is configured to adsorb the substrate to prevent the substrate from bending and contacting with the sample carrier ([col. 3, line 14]: “the drain 36 can be lowered and the negative pressure of the vacuum source 40 maintained, so that the tape 34 is pulled downward from the vessel 28.”),
as in Claim 10.
Regarding Claim 12, the prior art meets the limitations of Claim 10 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the adsorption device 38/40 is an object plane coated with a liquid layer, a surface, in contact with the substrate, of the object plane is coated with the liquid layer and is in parallel with a movement direction of the substrate, the object plane adsorbs the substrate through the liquid layer (col. 2, line 57: “The application vessel 28 has a rectangular window 32 at its bottom which opens onto and is in contact with a filter strip or tape 34. More specifically, the tape 34 closes the window 32 and the application vessel 28 and the tape 34 rest upon a drain 36 having a top 38. The top 38 has a corresponding rectangle configuration [object plane] to mate with the rectangular window 32, so as to form a water tight seal. While the sample suspension is entering the vessel 28 or after the total volume of the sample suspension enters the vessel 28, the control unit 26 enables a vacuum source 40 to provide a suction in the drain 36. This negative pressure sucks the liquid of the sample suspension through the tape 34 [creating liquid layer] in the direction of arrow 42, so that the cells remain on the upper surface of the tape 34.”),
as in Claim 12.
Regarding Claim 15, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above further comprising a liquid removal device disposed at a rear end of a movement path of the substrate, wherein the liquid removal device is configured to remove the liquid remaining on the substrate after the substrate has passed through the sample carrier (Fig. 1 and [col. 3, line 31]: “A hard sponge 66 is mounted on top of a block 68 having an extension portion 70. After the tape 34 has been advanced, the control unit 26 by way of a conductor 72 will enable a motorized gear assembly 74 to press the hard sponge 66 against the tape 34, thereby pressing the tape 34 against the slide 64.” – Liquid is removed from the substrate to the slide 64.), as in Claim 15.
Regarding Claim 46, the prior art meets the limitations of Claim 10 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the adsorption device is a vacuum adsorption device (col. 1, line 50: “vacuum means positioned under the application vessel means and the filter tape for sucking the liquid of the liquid suspension through the tape to deposit the cells on a tape portion of the filter tape”), and a surface, in contact with the substrate, of the vacuum adsorption device is in parallel with the substrate (Fig. 1 shows the adsorption device having a surface parallel with the tape 34 as at parallel surface 44), as in Claim 46.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Rusch et al. (US 2004/0071599 A1), hereinafter “Rusch”. Zahniser has been discussed above.
Regarding Claim 3, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the liquid arrangement device further comprises:
a fluid power module 14 (Fig. 1 and [col. 2, line 13]: “A pressure source 14 provides a positive pressure to the bath 12 by way of a conduit 16.”),
and a liquid storage device 12 (Fig. 1 and [col. 2, line 51]: “the sample suspension 17 in bath 12”),
wherein the fluid power module is configured to control the liquid to flow out from the liquid storage device and then to be disposed on the substrate through the liquid outlet mechanism ([col. 2, line 28]: “A control unit 26 initially enables the pressure source 14 by way of a conductor 25 to start providing the positive pressure, which in turn provides the sample to the cell sensor. Also, the cell count is provided to the control unit 26 from the counter 24 by way of an electrical conductor 30. When the cell count reaches a predetermined number set in the control unit, the control unit 26 deactivates the pressure source 14, so that the flow of sample suspension to the cell sensor 29 will cease.” – Note that this recitation is couched in a series of alternative “or” recitations not specifically required.),
as in Claim 3.
Further regarding Claim 3, Zahniser does not specifically teach the liquid transfer device discussed above comprising a valve device configured to control the liquid to flow out from the liquid storage device and then to be disposed on the substrate through the liquid outlet mechanism, as in Claim 3.
However, Rusch teaches a respective device comprising a tape 10 and a dispenser 42 for depositing sample liquid for bioassay analysis onto the tape (Figs 1 and 5, and Abstract). Rusch further teaches a solenoid valve configured with a controller for depositing precise volumes of liquid onto the tape ([0038]), allowing for accurate volumes to be dispensed ([0082]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the liquid transfer device of Zahniser to include a valve device configured to be controlled by the control device to control the liquid to flow out from the liquid storage device and then to be disposed on the substrate through the liquid outlet mechanism, such as suggested by Rusch, so as to improve the accuracy of volumes dispensed to the tape, thereby reducing error due to inaccurate dispensing, and would have a reasonable expectation of success therein.
Claims 7 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Boland et al. (US 20040237822/A1), hereinafter “Boland”. Zahniser has been discussed above.
Regarding Claim 7, the prior art meets the limitations of Claim 2 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the liquid is a plurality of liquids (Fig. 1 and [col. 3, line 54]: “After the transfer of the cells to the slide, the above process can now be repeated. The control unit 26, by reversing the motorized gear assembly 48, moves the vessel 28 back into contact with a new portion of the tape 34.” – Thus, a plurality of liquids is disposed on the tape 34.),
as in Claim 7.
Further regarding Claim 7, Zahniser does not specifically teach the liquid transfer device discussed above wherein the plurality of liquids comprises a plurality of reaction reagents and a buffer reagent, two of the plurality of reaction reagents distributed in a front and a back of the substrate are connected by the buffer reagent, as best understood as in Claim 7.
However, Boland teaches a respective fluid printing device for printing cell solutions on a substrate 216 wherein a plurality of liquids comprising reagents and buffers ([0048]) are utilized for cell maintenance. Therein, the print head 110 places two of the plurality of reaction reagents 210 and 214 as distributed in a front and a back of the substrate and being connected by the buffer reagent 212 (Fig. 4).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Zahniser wherein the plurality of liquids comprises a plurality of reaction reagents and a buffer reagent, two of the plurality of reaction reagents distributed in a front and a back of the substrate are connected by the buffer reagent, such as suggested by Boland, so as to provide an architecture for support of a thin cell layer, such as seen in Fig. 7, for optimized imaging as discussed by Boland.
Examiner further notes that while Zahniser utilizes fixative (killing the cells), the cells of Zahniser must necessarily include buffers and reagents (such as nutrients) as to have been grown and cultivated prior to application of the fixative to the buffered cell-containing solution. The fixative in Zahniser is merely additionally applied downstream in the process by a sponge mechanism 66.
Regarding Claim 21, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser teaches the liquid transfer device discussed above wherein the liquid arrangement device comprises a liquid outlet mechanism 27 (Fig. 1 and [col. 2, line 43]: “a known number of cells will be provided from a nozzle 27”), as in Claim 21.
Further regarding Claim 21, Zahniser does not specifically teach the liquid transfer device discussed above comprising a plurality of substrates, the plurality of substrates sharing the liquid arrangement device and the liquid outlet mechanism is configured to move along a guide rail to dispose the liquid to the plurality of substrates, as in Claim 21.
However, Boland teaches a respective cell printing device wherein the print head 110 is configured to move along a rail 115 to cover a broader area of the substrate surface 133 (Fig. 1 and [0045].).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Zahniser wherein the liquid outlet mechanism is configured to move along a guide rail, such as suggested by Boland, so as to cover a broader area of the substrate surface.
Further, regarding the “a plurality of substrates”, mere duplication of parts has no patentable significance unless a new and unexpected result is produced – see MPEP 2144.04(VI)(B). Herein, one skilled in the art would find it obvious to provide the liquid transfer device of Zahniser to include a plurality of substrates so as to increase analytical throughput of the device, allowing multiple substrates to be analyzed simultaneously. Therein, one skilled in the art would readily recognize the need for a means for positioning the dispenser over each substrate, such as a guide rail and driving motor or equivalent thereof. KSR International Co. v. Teleflex Inc.: "A person of ordinary skill is also a person of ordinary creativity, not an automaton."
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Shoffner et al. (US 2015/0293133 A1), hereinafter “Shoffner”. Zahniser has been discussed above.
Regarding Claim 9, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser does not specifically teach the liquid transfer device discussed above wherein the substrate is corona polyethylene terephthalate film, polystyrene film, or polyethylene film, as in Claim 9.
However, Shoffner teaches a respective cell printing device for printing droplets onto spooled tape; wherein Shoffner specifically teaches candidate materials for the spooled tape including polyethylene terephthalate film, polystyrene film, and polyethylene films ([0027]).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to provide the spooled tape of the device of Zahniser as a corona polyethylene terephthalate film, polystyrene film, or polyethylene film, such as suggested by Shoffner, so as to provide a suitable support material for supporting the printed cells.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Kato et al. (US PAT 3,999,505 A), hereinafter “Kato”. Zahniser has been discussed above.
Regarding Claim 17, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser does not specifically teach the liquid transfer device discussed above further comprising a flattening device disposed at a front end of a movement path of the substrate, wherein the flattening device is configured to flatten the liquid after the liquid is arranged on the substrate and before the liquid is transferred to the sample carrier, as in Claim 17.
However, Kato teaches a respective automated analyzer wherein biological sample liquid is deposited by a dispenser onto a tape unspooled from a reel, wherein a pair of rollers flattens the applied liquid and removes excess liquid therefrom ([col. 1, line 67]: “feeding a serum bearing film through the nip of a pair of rollers which supply a sufficient amount of the buffer solution to the film and which also remove an excess amount of the liquid therefrom”), thereby ensuring a uniform application of sample liquid and reducing error due to uneven, inconsistent sample density on the tape.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the liquid transfer device of Zahniser to include a flattening device disposed at a front end of a movement path of the substrate, wherein the flattening device is configured to flatten the liquid after the liquid is arranged on the substrate and before the liquid is transferred to the sample carrier, such as suggested by Kato, so as to ensure a uniform application of sample liquid and reduce error due to uneven, inconsistent sample density on the tape, and would have a reasonable expectation of success therein.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Natelson (US PAT 4,264,560 A), hereinafter “Natelson”.
Regarding Claim 44, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser does not specifically teach the liquid transfer device discussed above wherein the substrate is made of a transparent material, as in Claim 44.
However, Natelson teaches a respective liquid printing clinical analytical system wherein the film 113 is a transparent film enabling optical interrogation of the sample deposited thereon as seen in Fig. 3.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Zahniser wherein the substrate is made of a transparent material, such as suggested by Natelson to enable optical interrogation on all sides and therethrough, enabling a user to visually confirm sample deposition, and for a source/sensor arrangement as in Natelson to perform analyses thereon.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Zahniser in view of Nguyen et al. (WO 2019/198086 A1), hereinafter “Nguyen”.
Regarding Claim 45, the prior art meets the limitations of Claim 1 as discussed above. Further, Zahniser teaches the device discussed above wherein the reaction platform 32 comprises an object stage 28, the object stage is configured to carry the sample carrier 44 (Fig. 1 shows the application vessel 28 having a rectangular window portion 32 supporting the application station 44.), as in Claim 45.
Further regarding Claim 45, Zahniser does not specifically teach the device discussed above further comprising at least one spacer facing the substrate, and the at least one spacer is configured to form a spacing between the substrate and the sample carrier, as in Claim 45.
However, Nguyen teaches a respective bio-ink printing device (for printing layered corneal grafts) wherein the sample carrier 500 comprises spacers 600a for providing a 3D boundary for holding the cells (Fig. 2B and Cl. 26).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of Zahniser further comprising at least one spacer facing the substrate, and the at least one spacer is configured to form a spacing between the substrate and the sample carrier, such as suggested by Nguyen, so as to provide a 3D boundary for holding the cells, thereby reducing errors due to leaks and/or undesired flow along the substrate.
Response to Arguments
35 USC 112(f)
Examiner has updated the Claim Interpretation section above in accordance with Applicant’s amendments overcoming some of the 35 USC 112(f) interpretations set forth thereunder.
Upon further consideration, Examiner added the 112(f) interpretation over “a fluid power module...configured to be controlled by the control device to control the liquid to flow out from the liquid storage device...” as in Claim 3, as being a pump as in para. [0106] of Applicant’s instant pre-grant publication US 2022/0397585 A1...and equivalents thereof. As the fluid power module of Zahniser is the pressure source 14, Zahniser remains meeting the limitations of the claim as a pressure source meets the requirements of a pump of being a mechanical device using suction or pressure to raise or move liquids, compress gases, etc. No new grounds of rejection is relied upon as mere interpretation under 35 USC 112(f) is not a grounds of rejection, and the rejection of Claim 3 reciting the pump remains the same.
35 USC 112(b)
Applicant amended the claims to satisfy the requirements of 35 USC 112(f) and indefiniteness thereto when specific structure is not found within the disclosure. Applicant removed the term “control device”, specified the structure of the “driving device”, cancelled Claim 2 including the “liquid arrangement device”, cancelled Claim 13 including the “pushing device”, cancelled Claim 19 including the “acceleration device”, thus obviating interpretation under 35 USC 112(f) and thereby further overcoming indefiniteness thereto under 35 USC 112(b) for those placeholders failing to have a corresponding structure within the disclosure. As such, those claim interpretations under 35 USC 112(f) and indefiniteness rejections under 35 USC 112(b) drawn to the above discussed elements are hereby withdrawn.
Regarding Claim 1, Applicant’s removal of the expression “the substrate passes through the sample carrier”, removal of “and/or”, and amendment to recite the reaction platform configured to carry a sample carrier further overcome those indefiniteness rejections under 35 USC 112(b) thereto as set forth by the previous office action. As such, those indefiniteness rejections under 35 USC 112(b) drawn to the above discussed elements are hereby withdrawn.
Regarding Claim 7, Applicant’s amendments overcome the indefiniteness set forth by the previous office action over failing to specify the choosing of the liquid/plurality of liquids. Applicant further amended the claim to remove the “front-to-back language”.
Regarding Claim 9, Applicant’s amendments overcome the indefiniteness set forth by the previous office action over “coiled material” and “hydrophilicity/hydrophobicity” by specifying the specific materials used instead.
Regarding Claim 10, Applicant’s amendments overcome the indefiniteness set forth by the previous office action over “the liquid” not being a positively claimed element by removing the phrase.
Regarding Claim 12, Applicant’s amendments overcome the indefiniteness set forth by the previous office action over “the movement direction” not being a positive element in a static device by removing the phrase.
Regarding Claim 13, Applicant’s amendments overcome the indefiniteness set forth by the previous office action by cancelling the claim.
Claim 1 remains rejected for failing to positively claim the sample carrier particularly used within the claimed liquid transfer steps, thereby rendering the liquid transfer steps and/or presence of the sample carrier within the claim as indefinite. Further, Applicant’s amendments necessitated the new rejections of Claims 3, 7, and 12 under 35 USC 112(b).
35 USC 102 and 103
Applicant’s arguments are on the grounds that Zahniser allegedly fails to teach the die head and substrate configured to transfer liquid to the substrate and sample carrier, as required by Claim 1, given that negative pressure in Zahniser sucks fluid through the tape using a vacuum source.
Applicant’s arguments are not persuasive because col. 3 lines 3-9 discuss cells remaining on the surface of the tape 34 after application by the application vessel 28, thereby being configured to dispose liquid on the substrate, wherein while liquid is subsequently sucked through, liquid remains absorbed within the tape as well as on and in the remaining cells, thereby being configured for subsequent transfer to the sample carrier commensurately as claimed.
Applicant further argues that the tape of Zahniser allegedly does not move over the die head, thereby allegedly failing to meet the Claim 1 requirement that the die head dispose liquid on the substrate “during the substrate passing over the die head”.
Applicant’s arguments are not persuasive because such process limitations do not hold patentable weight in a device claim -- "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). As such, the provision of the substrate actively passing over the die head is not required to be present within the prior art. Further, the recitation “during the substrate passing over the die head” affords such a static process such as in Zahniser as even if the substrate were not actively moving, it would remain as “passing over” the die head. Applicant similarly argues this point in relation to the liquid transfer to the sample carrier not satisfying the “passing over” provision. However, as discussed above, the claim does not require an active “passing over” process, wherein mere contact of the substrate and carrier constitutes “passing over” under a broadest reasonable interpretation given their planar overlayment.
Applicant further argues that Zahniser allegedly fails to teach the “wiping off” aspect of Claim 1 for transferring the liquid on the substrate to the sample carrier. However, as discussed above in the body of the action, Zahniser col. 3, line 33 discussed liquid transfer between the substrate and the sample carrier via actuation of a sponge to press the substrate against the sample carrier, thereby causing a fluid transfer interpreted herein as satisfying the “wiping off” language given its commensurate result of fluid transfer. Examiner further notes that, similarly as above, a process of “wiping off” via advancing the tape during contact is drawn to a process not given patentable weight in a device claim, wherein the device of Zahniser is fully capable of such an active “wiping off” process.
Thus, Examiner respectfully maintains the rejection of Claim 1 under 35 USC 102(a)(1) as being anticipated by Zahniser, and dependents thereof under 35 USC 102 and 103 over at least Zahniser, thereby rendering Applicant’s arguments against the additional references failing to cure the alleged deficiency in Zahniser moot as no such deficiency exists as discussed above.
New Claims
Claims 44-46 are newly added herein. Claim 44 is rejected under 35 USC 103 over Zahniser in view of Natelson. Claim 45 is rejected under 35 USC 103 over Zahniser in view of Nguyen. And Claim 46 is rejected under 35 USC 102 as anticipated by Zahniser.
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 BENJAMIN KASS whose telephone number is (703)756-5501. The examiner can normally be reached Monday - Friday from 9:00 A.M. to 5:00 P.M. EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi, can be reached at telephone number (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798