DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
2. The present office action is made in response to the amendment filed by applicant on 10/03/5022. It is noted that in the amendment, applicant has made changes to the claims. There is not any change being made to the abstract, the drawings and the specification.
3. Regarding to the claims, applicant has amended claims 1-4 and 16, and added a new claims, i.e., claim 21, into the application.
Response to Arguments
4. The amendments to the claims as provided in the amendment of 10/03/2025, and applicant's arguments provided in the mentioned amendment, pages 5-8, have been fully considered and resulted the following conclusions.
A) Regarding the claims, the following conclusions are made:
A1) because applicant has added a new claim, i.e., claim 21, into the application and canceled claims 8-15, thus as amended and newly-added, the pending claims are now claims 1-7 and 16-21.
A2) a review of the newly-added claim 21 has resulted that the scope of the newly-added claim is similar to that recited in the elected claim 6, thus all pending claims 1-7 and 16-21 are examined in the present office action.
B) Regarding the Claim Interpretation set forth in the office action of 07/03/2025, applicant’s arguments provided in the amendment of 10/03/2025, pages 5-6, have been fully considered and are sufficient to overcome the Claim Interpretation set forth in the mentioned office action.
C) Regarding the rejections of claims 1-7 and 19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the office action of 07/03/2025, the amendments to the claims as provided in the amendment of 10/03/2025, and applicant’s arguments provided in the amendment of 10/03/2025, pages 6-7, have been fully considered and are sufficient to overcome the rejections of claims 1-7 and 19 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
D) Regarding the rejection of claims 1-7 and 16-20 under 35 U.S.C. 103 as being unpatentable over Chou et al (US Publication No. 2019/0128869) in view of Kihara et al (US Patent No. 8,786,693), set forth in the office action of 07/03/2025, the amendments to the claims as provided in the amendment of 10/03/2025, and applicant’s arguments provided in the amendment of 10/03/2025, pages 7-8, have been fully considered but they are not persuasive.
Applicant argued that the arts of record does not disclose the feature of “a spacer body including a material that is configured to provide an optical focal reference for a microscope”, see amendment in pages 7-8. The examiner offer the following opinions.
First, applicant is respectfully invited to review the claims with claimed language as recited/provided in the claims. There is not any specific limitation(s) of the feature(s) being recited/provided in the claims. Absence of any specific limitation(s) of a claimed feature then that claimed feature is given a board interpretation. With that in mind then the spacer body as claimed is understood as a spacer body including a translucent material which material is configured to provide an optical focal reference which “optical focal reference” is understood as a reference where the material is viewed/observed by a microscope. It is well known that a sample/object located/supported by a microscope slide is arranged in a focal reference/location of a microscope so that the sample/object is viewed/observed by an operator of the microscope.
Second, Chou et al discloses a spacer body having two plates (10, 20) and a plurality of spacers (40) formed on one of the plates. A material (90) spreads on the space defined by the two plates and/or deposited on the plates, see paragraph [0010]. Thus, when the spacer body with the material (90) is viewed/observed by an operator via a microscope then the spacer body with the material is on a focal reference of the microscope. Again, applicant should note that there is not any specific limitation of the so-called “an optical focal reference” being recited/provided in the claims. Applicant should further note that a sample/object located on a slide is understood as the one located in a stage of a microscope wherein an operator adjust the distance between the objective lens and the stage of the microscope for adjusting the focus.
Claim Rejections - 35 USC § 103
5. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
6. 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.
7. Claims 1-7 and 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Chou et al (US Publication No. 2019/0128869) in view of Kihara et al (US Patent No. 8,786,693) (both of record).
Chou et al discloses a spacer body for supporting sample(s) in a diagnostic analysis.
a) Regarding present claims 1-3, 5-6, 16-19 and 21, the spacer body as described in paragraphs [0004]-[0005], [0022]-[0053], … and fig. 1 comprises the following features:
a1) a first plate (10);
a2) a second plate (20);
a3) a plurality of spacers (40) formed on a surface of the first plate (10) for supporting cytological sample (90);
a4) at least one of the first and second plates is made by a transparent material, see paragraphs [0254], [0320], [024], … wherein the spacers is able to make by the same material as that of the plate, see paragraph [0024], thus when the first plate (10) is made by a transparent material then the spacers fixed on the first plate each is made by the same transparent material as that of the first plate;
a5) the second plate (20) configured to be positioned over the spacers (40), see fig. 1C which meets the feature recited in present claim 17; and
a6) the spacer body with the spacers supports one optical focal reference feature, i.e., a cytological material (90) which is located inside the spacer body meets the feature recited in claims 1-3, 5-6, 16-19 and 21 wherein the spacers comprises distinct and separated spacer portions positioned on the first plate (10), see fig. 1 which meet features recited in present claims 5-6 and 19;
a7) regarding the feature that the material of the spacer is a translucent material as recited in present claim 1, such feature is merely that of a preferred embodiment and no criticality has been disclosed. The support for that conclusion is found in the present specification in paragraphs [0016] and [0018] and is claimed in present claim 16 on lines 3-4. It is also noted that the use of either a transparent or translucent material for a base of a slide used in a microscope is known to one skill in the art as can be seen in the US Publication No. 2014/0022631, see paragraphs [0047], [0050], …, for example which a copy of the Publication is provided in the present office action.
a8) regarding the feature regarding “a central opening” as recited in present claims 1 and 18 and the shapes of the spacer body and the central opening as recited in present claims 2 and 3, it would have been obvious to one skill in the art to select a numbers of spacers for supporting a biological sample, thus when one skill in the art select spacers forming a central opening, i.e., a selection of spacers having eight spacers without the center spacers from the selection shown in fig. 1A then the spacers comprises a central opening which has a rectangular shape and the outer perimeter of the spacer body has a rectangular shape.
The only feature missing from the device provided by Chou et al is that Chou et al does not disclose that the device is used to support for cytological sample wherein the sample is observed by a microscope as recited in claims 1 and 16. However, the use of a device having a base, i.e., a first plate, for supporting a sample and a coverslip, i.e., a second plate, in a microscope wherein the microscope comprises means for adjusting the locations of the microscope body and/or the stage supporting a device for supporting a biological sample is known to one skill in the art as can be seen in the microscope system provided by Kihara et al, see columns 4-5 and 7-8 and figs. 1-2 and 4-5. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to utilize the device for supporting biological sample as provide by Chou et al in a microscope system provided by Kihara et al so that a person/observation can view and observation the biological sample in a diagnostic testing.
b) Regarding present claim 4, the device as provided by Chou et al comprises markers, see paragraph [0325] which would have been obvious to one skill in the art to use as an optical focal reference
c) Regarding present claims 7 and 20, the spacers as shown in fig. 1A comprises a group pf distinct and separated portions that are configured to be positioned adjacent to each other on the first plate (10) of the device.
Conclusion
8. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached on M - Th: 6:00 ~ 17:00.
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, STEPHONE B. ALLEN can be reached on (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872