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
The Amendment filed 04/17/2026 has been entered. Claims 1-15 remain pending in the application. Claims 1-4 and 14-15 are withdrawn. Applicant’s amendments to the claims have overcome each and every 112(b) rejections previously set forth in the Non-Final Office Action mailed 03/04/2026. New grounds of rejections necessitated by amendments are discusses below.
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.
Claims 5, 7-9, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Voss et al. (US 20200038001 A1; cited in the IDS filed 03/22/2023) in view of Viola et al. (US 20220031348 A1; effectively filed 09/24/2018).
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), formed as a single piece (Figs. 2-3 shows gripping portion 122 as one piece), 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] teaches the filter column 130 is fixedly retained within gripping portion 122); and
- a first section of the internal passageway (Fig. 2 and paragraph [0037], interpreted as a section of the internal lumen of the elongated shaft, i.e. internal passageway), which extends between the filter element and the tool orifice, has a longitudinal centre axis L (Fig. 2, interpreted as the longitudinal centre axis between filter column 130 and the orifice/opening where blade 148 is arranged; i.e. the longitudinal centre axis from element 140 to element 124 of Fig. 2), wherein
- the scraping blade (Figs. 1-3, blade 148) is arranged at one side of the tool orifice (Figs. 1-3 shows blade 148 arranged at one side of the orifice/opening of the elongated shaft 120).
Voss fails to teach: the scraping blade includes a partly cylindrical tube section that is curved around a blade axis B, whereby the blade axis B extends at an angle towards the longitudinal centre axis L of the first section of the internal passageway.
Voss teaches embodiments of various shapes and configurations of the scraping blade (Figs. 4-7, elements 148, 158). Voss teaches embodiments of a scraping blade that includes a partly cylindrical tube section that is curved around a blade axis (Figs. 13-16, blade portions 280, 282; paragraph [0070]), wherein the curvature of the blade can provide a select area of scraping (paragraph [0070]).
Viola teaches a surgical cutting device (abstract; Figs. 1-4) comprising a scraping blade (cutting tip 22). Viola teaches the scraping blade (Figs. 1-4, cutting tip 22) includes a partly cylindrical tube section that is curved around a blade axis B (Fig. 2 and paragraph [0024] teaches curved blade 24 is semi-circular, i.e. partly cylindrical tube section, that is curved around the x-x axis), whereby the blade axis B (Figs. 1-4, x-x axis) extends at an angle towards a longitudinal centre axis L of cutting device (Figs. 1-4 and [0023] teaches the x-x axis extends at an angle towards a longitudinal centre axis y-y). Viola teaches different cuts can be made depending on the shape of the blade (paragraph [0007]), and a need for specialized tools for cutting and removing cartilage (paragraph [0009]). Viola teaches the angular configuration and curvature of the cutting tip is optimized for use in hand and wrist procedures (paragraph [0025]).
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 embodiments of various shapes and configurations of the scraping blade, including a partly cylindrical tube section that is curved around a blade axis, for providing selective area of scraping (Figs. 4-7, 13-16; paragraph [0070]) and Viola’s teachings of a surgical cutting device with a semi-circular curved blade that is angled in relation to the central longitudinal axis of the device (Figs. 1-4; paragraphs [0023],[0024],[0025]) to provide: the scraping blade includes a partly cylindrical tube section that is curved around a blade axis B, whereby the blade axis B extends at an angle towards the longitudinal centre axis L of the first section of the internal passageway. Doing so would have a reasonable expectation of successfully improving selectivity of a scraping area (Voss, paragraph [0070]), improving specialization of the blade for desired cutting and removing procedures (Viola, paragraphs [0007],[0009]), and optimizing angular configuration and curvature of the scraping blade is optimized for desired procedures (Viola, paragraph [0025]).
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 diameter portion (Fig. 3, the diameter of threaded portion 126) 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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Voss in view of Viola 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, modified 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 modified 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 in view of Viola as applied to claim 5 above, and further in view of Xalabarder et al. (US 20180184957 A1).
Regarding claim 10, modified 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 modified 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 in view of Viola as applied to claim 5 above, and further in view of Tanaka et al. (US 20130184732 A1).
Regarding claim 11, modified 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 modified 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).
Response to Arguments
Applicant’s arguments, see page 8, filed 04/17/2026, with respect to the rejection under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejection under 35 U.S.C. 112(b) of 03/04/2026 has been withdrawn.
Applicant’s arguments, see pages 8-11, filed 04/17/2026, with respect to the rejection(s) of claims 5, 7-9, and 12-13 under 35 U.S.C 102(a)(1) and claims 6, 10, and 11 under 35 U.S.C. 103, specifically regarding the limitation of “the scraping blade includes a partly cylindrical tube section that is curved around a blade axis B, whereby the blade axis B extends at an angle towards the longitudinal centre axis L of the first section of the internal passageway” of amended claim 5, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Voss et al. (US 20200038001 A1; cited in the IDS filed 03/22/2023) in view of Viola et al. (US 20220031348 A1; effectively filed 09/24/2018).
Applicant's arguments, see page 8, filed 04/17/2026, with respect to the rejection of claim 5 under 35 U.S.C. 102, specifically regarding the limitations of “a dissection tool in which the filter element is fixedly retained within the main body of the tool that also comprises a conical attachment interface, whereby the main body is executed as a single piece”, have been fully considered but they are not persuasive.
Voss teaches: a dissection tool (abstract; Figs. 1-25) in which the filter element (Figs. 1-3 and paragraph [0041]-[0042], filter column 130) is fixedly retained within the main body of the tool (Figs. 2-3 and paragraph [0041]-[0042] teaches the filter column 130 is fixedly retained within gripping portion 122, i.e. main body) that also comprises a conical attachment interface (Figs. 2-3, vacuum coupler 124), whereby the main body is executed as a single piece (Figs. 2-3 shows gripping portion 122 as one piece). Voss’s teachings of the filter column 130 that is received by the internal lumen of elongated shaft 120 (Figs. 1-3; paragraphs [0041]-[0042]), where the filter column is “secured inside the internal lumen of the elongated shaft” (paragraph [0010]) reads on the limitations of “the filter element is fixedly retained within the main body part”.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “the filter element is fixedly retained in the internal passageway of the main body part and cannot be removed, without damage. As a result, the tool incorporates features that allow the tool to be used on an apparatus that performs automated dissection of sample material and automated transfer of the dissected material to a collection tube”, Remarks, page 8) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Additionally, the BRI of claim 5 does not exclude elements that are separable and does not exclude the intended use or functional limitations of elements being separable. Since Voss’s filter column 130 can be fixedly retained within gripping portion 122 when assembled, Voss’s filter column reads on: “the filter element is fixedly retained within the main body part”.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Peterson (US 20120265228 A1) teaches a scraping element (abstract; Figs. 1-8) including a blade (120), which has a partly semi-cylindrical tube section that is curved around an axis (Figs. 2-8; paragraph [0056]).
Mirza et al. (US 20170042566 A1) teaches an endoscopic surgical element (abstract). Mirza teaches a tubular knife (paragraph [0066]). Mirza teaches a cutting surface of a blade is angled and can include a semi-circular shape (paragraph [0079]).
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 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
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