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 .
Election/Restrictions
Applicant's election with traverse of Group III in the reply filed on 12/12/2025 is acknowledged. The traversal is on the ground(s) that the PTO used the “independent and distinct” analysis and not the unity of invention analysis. Examiner respectfully agrees. However, in order to enhance prosecution of the application a modified requirement claims filed on 12/12/2022 is stated below:
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-6, drawn to a coverslipping module.
Group II, claim(s) 7-20, drawn to a method of preparing a covered slide for optical analysis.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because the groups do not share the same or corresponding technical feature. Group I is directed to a slide mount table and coverslip tape dispenser whereas the claims of Group II are directed to a mounting medium and a pressure sensitive adhesive.
Applicants filed a response on 12/12/2025 electing Group II, claims 7-20 with traverse.
Claim Rejections - 35 USC § 112
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.
Claim 9 recites the limitation "the clean coverslip tape" in Line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 7-14 and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pickett (US 3939019).
Regarding claim 7, Pickett teaches a covering apparatus and method comprising contacting a sample (tissue) on a slide with a mounting medium (heptane or toluene). Applicants recite “wherein the mounting medium does not contain xylene”, Pickett teaches many alternatives that can be used as “a mounting medium” that operate like xylene such as toluene and heptane. (Refer to Col. 5, Lines 10-11) Pickett further teaches covering the sample on the slide with a coverslip (15), wherein the coverslip has first and second major surfaces and comprises a pressure sensitive adhesive (optically clear adhesive) on the first major surface facing the sample (Refer to col. 5, Lines 12-20); and applying a suitable pressure (19) to the coverslip, thereby adhering the coverslip to the slide.
Regarding claim 8, the coverslip comprises a coverslip tape (15).
Regarding claim 9, unwinding a section of the clean coverslip tape (25 or 14) and applying the unwound section to the slide.
Regarding claim 10, clean coverslip tape is on a release layer, and the method comprises separating the coverslip tape from the release layer (42).
Regarding claim 11, placing the sample on the slide and removing a solvent from the specimen before covering the sample. (Refer to Col. 6, Lines 27-35)
Regarding claim 12, partially or fully dewatering the sample after placing on the slide. (Refer to Col. 1, Lines 38-40)
Regarding claim 13, the sample is partially or fully dewatered by solvent exchange. (Refer to Col. 1, Lines 38-40)
Regarding claim 14, an exchange solvent is applied to the sample by spraying (33).
Regarding claim 16, an exchange solvent is applied to the sample by flowing across the sample through a capillary gap (the gap located between the tapes). (Refer to Figure 1)
Regarding claim 17, the slide is moved relative to the capillary gap to treat a larger surface area. (Refer to Figure 1)
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mische (US 2016/0018428).
Refer above for the teachings of Pickett.
Pickett fails to teach blowing a line of gas on the sample so as to evaporate solvent.
Misce teaches a system and method of analyzing a sample comprising an air knife in order to wash out the samples depending on how the biological sample needs to be processed.
It would have been obvious to one having ordinary skill in the art to provide the device of Pickett with an air knife blowing a line of gas on the sample depending on how the biological sample needs to be processed.
Allowable Subject Matter
Claims 18-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The closest prior art fails to teach a piezo transducer is applied to the slide to induce high frequency pressure waves to speed up the solvent exchange, removing the slide from a slide carrier and placing the slide on a slide table. and the pressure sensitive adhesive penetrates holes in the sample.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JYOTI NAGPAUL whose telephone number is (571)272-1273. The examiner can normally be reached M-F 9am to 5pm, EST.
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/JYOTI Mutreja/Primary Examiner, Art Unit 1798