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 .
Claims 1, 2 and 4-7 are pending in this application and were examined on their merits.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 2 and 4-7 are newly rejected under 35 U.S.C. § 112(a) or 35 U.S.C. §112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 now recites, "a density of each one of the walls is equal to or greater than 99%, when a density of a wall with no holes, no micropores and no nanopores is 100%". There is insufficient support in the originally filed disclosure for this new limitation. Applicant cites Pg. 13, Lines 1-8 as supporting the amendment however, the citation only describes “the dense wall” singular and not to “each one of the walls” as claimed. Only the “dense wall” is described as “a wall with no holes, micropores, or nanopores with a density of equal to or greater than 99%” and there is no description for the density of any other wall of the claimed component. Claims 2 and 4-7 are rejected as failing to rectify the new matter issue and being dependent upon rejected Claim 1.
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, 2 and 4-7 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. Claim 1 now recites, "a density of each one of the walls is equal to or greater than 99%, when a density of a wall with no holes, no micropores and no nanopores is 100%". It is unclear what the metes and bounds of the claim are as the percentage is meaningless without units (relative density/specific gravity is commonly expressed in units of g/cm²). Further, if each of the component walls is 100% (i.e., greater than 100%) which is contingent on the density of “a wall” with no holes, no micropores and no nanopores being 100%, than are all of the component walls free of holes, micropores and nanopores? For purposes of examination, any wall density has been interpreted as meeting the claim limitation. Claims 2 and 4-7 are rejected as failing to rectify the indefiniteness issue and being dependent upon rejected Claim 1.
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.
Claims 1 and 4-7 are newly rejected under 35 U.S.C. § 103 as being unpatentable over Uesugi et al. (07/19/2019), of record, in view of Nippon Tungsten (2019), cited in the IDS, translation, as evidenced by Masumoto et al. (2017), of record.
Uesugi et al. teaches a component (MVC or micro vacuum chuck, Pg. 3, Section
2.1) including a second surface (wall), a first flat surface (wall), multiple holes (n=7 or
17) for passing air from the first surface toward the second surface and walls formed in
a direction from the first to the second surface, the walls separating the holes (Pg. 4,
Fig. 1 and Pg. 5, Fig. 2);
and sucking a biological tissue with an initial length of 5mm (Pg. 7, Line 45) with the holes on the first surface side in a single direction, thereby collecting the tissue (Pg. 4, Fig. 1).
The reference teaches the holes have a diameter of 50 µm, 100 µm (meeting the limitation of Claim 1 that the ceramic component has a diameter of each one of the holes being equal to or greater than 50 µm and equal to or less than 190 µm) or 200 µm (Pg. 8, Lines 10-13 and Pg. 9, Fig. 5).
The reference additionally teaches the component is able to fix variously sized and shaped 3D tissues by adjusting the size and shape of the component (Pg. 4, Lines 22-23).
With regard to Claims 4-5, the reference additionally teaches suction is applied to the 3D biological tissue at 1 kpa (or 1000 Pa) (Pg. 6, Paragraph 2.3).
Uesugi et al. did not teach a method wherein each of the end portions of the walls on the first surface side are rounded and formed as a continuous curved surface with no corner or pointed portions when viewed in a direction perpendicular to the direction in which the wall is formed from the first surface;
wherein when the biological tissue is sucked into contact with the holes, equal to or greater than 50% and equal to or less than 90% of an area of the biological tissue, wherein the component is made of ceramic,
and a density of each one of the walls is equal to or greater than 99%, when a density of a wall with no holes, no micropores and no nanopores is 100%, as now required by Claim 1;
wherein no corner and no pointed portions is formed on the end portions of the first surface, as required by Claim 6;
or wherein all of the end portions of the first surface are rounded and formed as the continuous curved surface with no corner and no pointed portions when viewed in the direction perpendicular to the direction in which the walls are formed from the first surface to the second surface, as required by Claim 7.
Nippon Tungsten teaches a porous alumina/NPP-3D (see Masumoto, Pg. 12, Abstract and Title) ceramic vacuum chuck component (Pg. 2, Lines 12 and Pg. 6, "Our Porous Vacuum Chuck") wherein the pores on the first surface side are rounded and formed as a curved surface when viewed in a direction perpendicular to the direction in which the pores are formed from the first surface;
wherein a large pore size and blunt (i.e. without corners or pointed portions) wall ends produce large dents/deformation and a small pore size and rounded pores produce no dents/deformation (Pg. 5, Figs. 1- 3); and
wherein the porous ceramic component reduces suction marks as much as possible and prevents deformation of thin workpieces (Pg. 4, Lines 1-4).
It would have been obvious to those of ordinary skill in the art before the instant invention to modify the method of Uesugi et al. of using a vacuum component to collect a biological tissue to use a porous ceramic vacuum component of Nippon Tungsten and further modify the end portion of the walls on the first surface side to be rounded and formed as a curved surface when viewed in a direction perpendicular to the direction in which the wall is formed from the first surface because this would allow the collection of a biological tissue with suction over a wider area than that of the component of Uesugi and produce less denting/deformation in the tissue. Those of ordinary skill in the art would have been motivated to make this modification in order to reduce suction marks on the biological tissue as much as possible and prevent deformation of thin tissue.
There would have been a reasonable expectation of success in making this modification because both references are reasonably drawn to the same field of endeavor, that is, porous vacuum chucks and the use thereof.
While the references listed above do not specifically teach the limitation of Claim 1, that the ceramic component has a density of each one of the walls is equal to or greater than 99%, when a density of a wall with no holes, no micropores and no nanopores is 100%, one of ordinary skill in the art would recognize that the density of a ceramic composition and the walls thereof is a result-effective optimizable variable. For example, the density of a ceramic is inversely related to the porosity of the material. This is motivation for someone of ordinary skill in the art to practice or test the ceramic % density parameter values widely to find those that are functional or optimal to provide a sufficiently porous ceramic with a desired density which then would be inclusive or cover the instantly claimed values. Absent any teaching of criticality by the Applicant concerning the ceramic components percentage density, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization (see MPEP § 2144.05 (II)(B). Those of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make this modification in order to obtain a ceramic component with the desired porosity/density. There would have been a reasonable expectation of success in making these modifications because all of the references are reasonably drawn to the same field of endeavor, that is, porous vacuum chucks and the use thereof.
With regard to the limitation of Claim 1, "wherein when the biological tissue is sucked into contact with the holes, equal to or greater than 50% and equal to or less than 90% of an area of the biological tissue", while the references listed above do not specifically teach the limitation, one of ordinary skill in the art would recognize that the area of biological tissue sucked into contact with the holes is a result-effective optimizable variable. That is, the % area of the biological tissue sucked into contact with the holes is dependent on the size of the biological tissue and the density of holes in the ceramic vacuum component. This is motivation for someone of ordinary skill in the art to practice or test the parameter values widely to find those that are functional or optimal to provide a ceramic vacuum component which sucks the desired percentage of tissue when in use, which then would be inclusive or cover the instantly claimed values. Absent any teaching of criticality by the Applicant concerning the ceramic components percentage density, it would be prima facie obvious that one of ordinary skill in the art would recognize these limitations are an optimizable variable which can be met as a matter of routine optimization (see MPEP § 2144.05 (II)(B). Those of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to make this modification in order to obtain a ceramic component with the desired percentage of biological tissue adsorbed. There would have been a reasonable expectation of success in making these modifications because all of the references are reasonably drawn to the same field of endeavor, that is, porous vacuum chucks and the use thereof.
Claims 1, 2 and 4-7 are rejected under 35 U.S.C. § 103 as being unpatentable over Uesugi et al. (07/19/2019), of record, in view of Nippon Tungsten (2019), cited in the IDS, translation, as evidenced by Masumoto et al. (2017), of record, as applied to Claims 1 and 4-7 above, and further in view of Saita et al. (CA 1,325,327), of record.
The teachings of Uesugi et al. and Nippon Tungsten were discussed above.
Neither reference taught a method wherein the component is made of zirconia, as required by Claim 2.
Saita et al. teaches a method of making a porous ceramic from a ceramic powder, wherein the ceramic powder may be alumina, zirconia, calcium triphosphate or hydroxyapatite (Pg. 10, Claims 1-2).
It would have been obvious to those of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Uesugi et al. and Nippon Tungsten of using a porous alumina ceramic vacuum component to collect a biological tissue to use a zirconia ceramic component as taught by Saita et al. above because the art recognizes that porous ceramic may be prepared from either alumina or zirconia. See the MPEP at 2144.06, II. Those of ordinary skill in the art would have been motivated to make this modification based on the availability of ceramics and artisan preference.
There would have been a reasonable expectation of success in making this
modification because Nippon Tungsten is drawn to a porous alumina ceramic and Saita
et al. teaches that porous ceramics may be prepared from either alumina or zirconia.
Response to Arguments
Applicant's arguments filed 06/10/2026 have been fully considered but they are not persuasive.
The Applicant argues that Claim 1 has been amended to address the rejection under 35 U.S.C. § 112(b) or 35 U.S.C. § 112 (pre-AIA ), second paragraph (Remarks, Pg. 4, Lines 4-11).
This is not found to be persuasive for the reasoning provided in the new rejections above.
The Applicant argues that Uesugi teaches a PDMS vacuum chuck and there would be no motivation to modify the reference to use the claimed ceramic or prior art taught alumina as the vacuum chuck material as taught by Nippon Tungsten or round the edges (Remarks, Pg. 5, Lines 13-31).
This is not found to be persuasive for the following reasons, initially Applicant has provided no evidence on the record to support the assertion that the vacuum chuck of Uesugi is made of PDMS. Secondly, in response to Applicant’s argument that there is no motivation to modify the references, 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, while Uesugi is silent with regard to the composition of their vacuum chuck, Nippon Tungsten teaches a ceramic/alumina vacuum chuck with rounded pore edges with advantageous properties with regard to reduction of suction marks and deformation of thin materials. Thus, those of ordinary skill in the art would have been motivated to modify Uesugi in view of Nippon Tungsten in order to reduce suction marks on the biological tissue as much as possible and prevent deformation of thin tissue.
The Applicant argues that the Examiner has engaged in improper hindsight in interpreting the effect of pore size reduction to the end face shape as the reference only teaches comparison of the “pore size” wherein when the pore size is 50 µm, deformation decreases and decreases with further reduction in pore size (Remarks, Pg. 6, Lines 5-16).
In response to Applicant's argument that the Examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this instance, Nippon Tungsten clearly teaches that both a reduction in pore size and the use of rounded/blunted end face shapes produce the desirable qualities of reduction of suction marks and deformation of thin materials. Thus, the ordinary artisan would have found obvious the modification of Uesugi in view of Nippon Tungsten in order to reduce suction marks on the biological tissue as much as possible and prevent deformation of thin tissue.
The Applicant argues that the product of Nippon Tungsten is a very fine porous structure which resembles as sponge and the reference does not teach or suggest rounding the end portion of walls having a density of 99% or more (Remarks, Pg. 6, Lines 28-29 and Pg. 7, Lines 1-2).
This is not found to be persuasive for the following reasons, as discussed above,
Nippon Tungsten teaches a porous alumina/NPP-3D (see Masumoto, Pg. 12, Abstract and Title) ceramic vacuum chuck component (Pg. 2, Lines 12 and Pg. 6, "Our Porous Vacuum Chuck") wherein the pores on the first surface side are rounded and formed as a curved surface when viewed in a direction perpendicular to the direction in which the pores are formed from the first surface; wherein a large pore size and blunt (i.e. without corners or pointed portions) wall ends produce large dents/deformation and a small pore size and rounded pores produce no dents/deformation (Pg. 5, Figs. 1- 3); and
wherein the porous ceramic component reduces suction marks as much as possible and prevents deformation of thin workpieces (Pg. 4, Lines 1-4). With regard to the limitation that "a density of each one of the walls is equal to or greater than 99%, when a density of a wall with no holes, no micropores and no nanopores is 100%", the limitation was found to be indefinite and for purposes of examination, any wall density has been interpreted as meeting the claim limitation. Therefore the walls of the prior art having an inherent density, would meet the claimed limitation.
The Applicant argues that the limitation that “when the biological tissue is sucked in contact with the holes, a total area of the holes is equal to or greater than 50% and equal to or less than 90% of an area of the biological tissue”, is not a result effective variable. Applicant further asserts that the prior art does not provide a reasonable expectation that the skilled artisan could have adjusted the variable. Applicant argues that Uesugi discloses a preferred embodiment using pores of 100 µm wherein a particular pore/tissue contact area is used with a higher suction pressure than claimed.
Applicant concludes that the partial absorption configuration which minimizes contact area while compensating with high pressure suction is the opposite of the claimed invention which increases surface contact area while reducing suction pressure (Remarks, Pg. 8, Lines 4-30 and Pg. 9, Lines 1-23).
This is not found to be persuasive for the following reasons, that the reference discloses a particular preferred embodiment is not evidence of non-obviousness. The Applicant’s arguments bolster the Examiner’s position that the percentage of biological tissue adsorbed to the vacuum chuck surface is, in part, dependent on the number of pores available on the vacuum chuck surface to contact the biological tissue. Thus, the ordinary artisan would have recognized that the percentage of biological tissue adsorbed to the vacuum chuck surface is a result which is dependent on the number of pores on the surface, the size of the tissue and the applied vacuum pressure. As noted above, Uesugi discloses wherein suction is applied to the 3D biological tissue at 1 kpa (or 1000 Pa), which is the same value as claimed.
The Applicant argues that Masumoto does not remedy the alleged deficiencies of Uesugi and Nippon Tungsten and allegedly teaches a lower area ratio as well as a teaching that the area ratio to adsorbed object is not an important design variable (Remarks, Pg. 9, Lines 26-30, Pg. 10 and Pg. 11, Lines 1-11).
This is not found to be persuasive for the following reasons, as set forth in the prior action and above, Masumoto was an evidentiary reference which was cited only as providing the elemental composition of the vacuum chuck of Nippon Tungsten and not for any teaching of “area ratio” or the adsorption of materials. The Examiner maintains that the claims are obviated by Uesugi and Nippon Tungsten as set forth above.
The Applicant argues that Saita is directed to material for the manufacture of bone implants and therefore is not related to vacuum chuck design. Applicant concludes that the conventional use of materials in different fields does not establish the obviousness of material selection for a particular application (Remarks, Pg. 11, Lines 12-18).
This is not found to be persuasive for the following reasons, as discussed above, Nippon Tungsten is drawn to a porous alumina ceramic vacuum chuck while Saita teaches that porous ceramic may be made from a ceramic powder such as alumina or zirconia. Thus the ordinary artisan would have found obvious the selection of either alumina or zirconia when seeking to construct a porous ceramic.
Conclusion
No claims are allowed.
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 PAUL C MARTIN whose telephone number is (571)272-3348. The Examiner can normally be reached Monday-Friday 12pm-8pm EST.
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, Sharmila G Landau can be reached at (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL C MARTIN/Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653
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