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 without traverse of Group 2, claims 5-13, in the reply filed on 01/29/2026 is acknowledged.
Claims 1-4 and 14-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/29/2026.
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 13 is 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.
Regarding claim 13, the term “relatively large-diameter” in claim 13 is a relative term which renders the claim indefinite. The term “relatively large-diameter” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 5, 7-9, and 12-13 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Voss et al. (US 20200038001 A1; cited in the IDS filed 03/22/2023).
Regarding claim 5, Voss teaches a dissection tool (abstract; Figs. 1-25) for removing and collecting biological material from a sample disposed on a planar substrate (interpreted as an intended use, see MPEP 2114; abstract, Fig. 1 shows collection of tissue samples from slides), the tool having a tool body (Figs. 1-3, elongated shaft 120) through which an internal passageway (Fig. 2 and paragraph [0037] teaches an internal lumen of the elongated shaft, i.e. internal passageway) extends between first (Figs. 2-3, end of elongated shaft 120 towards element 140) and second ends (Figs. 2-3, end of elongated shaft 120 towards element 124), wherein the tool further comprises:
a scraping blade (Figs. 1-3, blade 148) arranged at an orifice of the tool, provided at the tool first end (Figs. 1-3 shows blade 148 arranged at an orifice/opening of the elongated shaft 120);
a first connection interface (Figs. 2-3, vacuum coupler 124), provided at the tool second end (Figs. 2-3) for releasably connecting the dissection tool in an airtight manner to a mating interface on a tool carrier (interpreted as an intended use of the first connection interface, see MPEP 2114; paragraphs [0038],[0046] teaches vacuum coupler 124 is configured to receive a tube, other component of a vacuum, or other suction device; therefore, the vacuum coupler 124 is capable of releasable connecting the tool in an airtight manner to a mating interface on a tool carrier, e.g. a vacuum/suction device, at a later time; note that “mating interface on a tool carrier” is not positively recited structurally); and
an air-permeable filter element (Figs. 1-3 and paragraph [0041]-[0042], filter column 130; paragraph [0051] teaches flakes of a sample are collected in the filter column 130 during vacuum suction, therefore the filter is air-permeable) arranged within the internal passageway to span the full diameter thereof (Figs. 2-3 and paragraphs [0041],[0042] teach the filter column 130 is within the internal lumen of the elongated shaft 120; paragraph [0049] teaches the diameter of the central lumen is similar to the internal diameter of the filter column), wherein,
- the tool body includes a main body part (Figs. 2-3, gripping portion 122) in which the first connection interface is integrally formed (Figs. 2-3 and paragraph [0036] teaches vacuum coupler 124 is integrally formed with the gripping portion 122), whereby the first connection interface includes at least one conical recess or at least one conical protrusion (Figs. 2-3 and paragraph [0038] teaches vacuum coupler 124 is a conical shaped recess or protrusion);
- the filter element is fixedly retained within the main body part (Figs. 2-3 and paragraph [0041]-[0042]); and
- the main tool body part (Figs. 2-3, gripping portion 122) is formed as a single piece (Figs. 2-3).
Regarding claim 7, Voss further teaches wherein the scraping blade (Figs. 2-3, blade 148) is incorporated in a second part (140) that is joined to the main tool body part (Figs. 1-3).
Regarding claim 8, Voss further teaches wherein the filter element (Figs. 1-3 and paragraph [0041]-[0042], filter column 130) is held in a separate frame part (Fig. 3, main column 132) that is fixedly retained within the main tool body part (Figs. 1-3 and paragraph [0041]-[0042]).
Regarding claim 9, Voss further teaches wherein the main tool body part is overmoulded to the filter element (Figs. 2-3 and paragraphs [0041],[0042] teach the filter column 130 is within the internal lumen of the elongated shaft 120; paragraph [0049] teaches the diameter of the central lumen is similar to the internal diameter of the filter column; therefore, the main tool body part of the gripping portion 122 of the elongated shaft 120 is molded or formed over the filter column 130 when assembled as shown in Fig. 2).
Note that “overmoulded” 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. The patentability of a product does not depend on its method of production. Since Voss teaches the main tool body part of the gripping portion 122 of the elongated shaft 120 is molded or formed over the filter column 130 when assembled (Figs. 2-3; paragraphs [0041],[0042],[0049]), Voss teaches the product as claimed. Thus, Voss teaches all of the limitations of claim 9.
Regarding claim 12, Voss further teaches the dissection tool according to claim 5, further comprising a second connection interface (Figs. 2-3, threaded portion 126) for establishing an airtight connection with a collection tube (interpreted as an intended use, see MPEP 2114; Figs. 2-3 and paragraphs [0039]-[0040] teach threaded portion 126 allows for coupling to an element such as cap 140, therefore the threaded portion is structurally capable of establishing an airtight connection with a collection tube at a later time via the treaded portion; note that the “collection tube” is not positively recited structurally).
Regarding claim 13, Voss further teaches wherein the second connection interface (Figs. 2-3, threaded portion 126) is integrally formed in the tool body (Fig. 3) and includes a relatively large-diameter portion (Fig. 3, the diameter of threaded portion 126 is interpreted as a relatively large diameter) having an underside (Fig. 3, interpreted as the end towards element 140) adapted to receive an upper rim of the collection tube (Fig. 3, the end towards element 140 of threaded portion 126 is structurally capable of receiving a rim of a collection tube at a later time; note that the “collection tube” is not positively recited structurally).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Voss as applied to claim 5 above, and further in view of Adey et al. (US 20140329269 A1; cited in the IDS filed 11/15/2024).
Regarding claim 6, Voss fails to teach: wherein the scraping blade is incorporated in the main tool body part.
Voss teaches an embodiment (Fig. 6), where the blade (158) is incorporated in a tool body part (156). Voss teaches an embodiment (Figs. 13-16) where the blade (280) is incorporated in a main tool body part (Figs. 13-16 teaches blade 280 incorporated inside a cap 260). Voss teaches the components of the systems can be integrated together in a single product (paragraph [0089]). Voss teaches the blade can be angled or positioned in various ways to remove a sample from a slide (paragraph [0051]).
Adey teaches devices for extracting a material from a biological sample on a planar surface with an extraction tool (abstract; Figs. 1-8). Adey teaches the device includes cutting tips including blades (paragraph [0046]), wherein a tip is incorporated in a main tool body part (Fig. 1 shows cutting tip 14 in housing 12; Fig. 8 shows interchangeable tip 147 incorporated in an outer sleeve 143).
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 scraping blade of Voss to incorporate Voss’s teachings of the blade incorporated with a main tool body part and the components can be integrated in a single product (Figs. 6, 13-16; paragraph [0089]) and Adey’s teachings of a scraping blade incorporated in a tool body part, such as a housing (Figs. 1, 8; paragraph [0046]) to provide: wherein the scraping blade is incorporated in the main tool body part. Doing so would have a reasonable expectation of successfully improving housing and incorporation of the blade element within the main tool body part, improving simplicity and integration of components, and optimizing the positioning and angle of the blade relative to the main tool body part.
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. a scraping blade incorporated in a main tool body part) by known methods with no change in their respective functions (i.e. removing and collecting a sample), and the combinations yielded nothing more than predictable results (i.e. providing the scraping blade in the main tool body part would yield nothing more than the obvious and predictable result of enabling integration of the blade with the main tool body for removing and collecting a sample). See MPEP 2143(A).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Voss as applied to claim 5 above, and further in view of Xalabarder et al. (US 20180184957 A1).
Regarding claim 10, Voss fails to teach: wherein the first connection interface additionally includes one or more snap-fit elements.
Voss teaches a vacuum coupler configured to receive a tube or other component of a vacuum, or other suction device (paragraph [0038]). Voss teaches a cap comprising a ridge that can create a snap-fit between a cap and cap coupler (paragraph [0077]).
Xalabarder teaches a system for taking samples, including a pump (abstract). Xalabarder teaches a pump comprising a positioning means comprising a reversible snap fitting means for reversibly fixing the fixed surface relative to the pumping surface (paragraph [0023]). Xalabarder teaches the reversible snap fitting enormously simplifies the operation of “opening” and “closing” the pump, such that the operation of replacing the flexible tube may be done in a few seconds, without needing any special tool or specific knowledge or training (paragraph [0034]).
Since Xalabarder teaches removing and collecting samples with a pump, similar to Voss, 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 first connection interface of Voss to incorporate the teachings of snap fitting means of Xalabarder (paragraphs [0023],[0034]) to provide: wherein the first connection interface additionally includes one or more snap-fit elements. Doing so would have a reasonable expectation of successfully improving securing and removing of components of a vacuum or suction device to the dissection tool.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Voss as applied to claim 5 above, and further in view of Tanaka et al. (US 20130184732 A1).
Regarding claim 11, Voss fails to teach: wherein the first connection interface includes a single conical recess which forms part of the tool internal passageway.
Voss teaches the first connection interface includes a conical shape, can have a barbed design, can define an internal lumen, and can be threaded for a screw-type connection with a vacuum or suction device (paragraph [0038]; Figs. 2-3).
Tanaka teaches a tissue harvesting apparatus (abstract; Fig. 4). Tanaka teaches the apparatus includes a first connection interface (Fig. 4, luer lock portion 44b) including a single conical recess, i.e. luer lock, that forms part of an internal passageway (Fig. 4 and paragraph [0068], luer lock portion 44b). Tanaka teaches the luer lock portion allows a syringe for suction to be detachably connected (paragraph [0068]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the first connection interface of Voss with another known element (Tanaka’s luer lock with a conical recess) to provide wherein the first connection interface includes a single conical recess which forms part of the tool internal passageway, and the result of the substitution (i.e. allowing for improved securing and detaching of vacuum or suction devices to the tool) would have been predictable. See MPEP 2143(I)(B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Heub et al. (US 20200200722 A1) teaches a device for removing a sample from a surface of a plate by means of a blade at an opening of a cannula, the sample being fed through the cannula to a specimen chamber (abstract; Fig. 1). Heub teaches the device includes a filter (Fig. 1, frit 14) disposed in a transition region of the specimen chamber 3 into the connecting line 12 prevents the particles 13 of the sample that have been sucked into the specimen chamber 3 and collected there from being sucked out of the specimen chamber 3 by the reduced-pressure generation device (paragraph [0058]).
Yeung et al. (US 20190390252 A1; cited in the IDS filed 11/15/2024) teaches a dissection tool (Figs. 11, element 1010) including a tool body (1014) with an internal passageway (1012), a scraping blade at an orifice at a first end of the tool body (1010, 1020), a first connection interface (1022), a filter element (1016).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571) 270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY H NGUYEN/Primary Examiner, Art Unit 1758