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
The amendment filed on 12/02/2025 was accepted and entered. Accordingly, claim(s) 1 has/have been amended. Claim(s) 2 and 12 previously has/have been cancelled. Claim(s) 18-20 has/have been newly added. Thus, claims 1, 3-11, and 13-20 are currently pending in this application.
Response to Arguments
Applicant's arguments filed 12/02/2025 have been fully considered but they are not persuasive.
Regarding Applicants arguments that Groenewoud is silent as to low-z materials. These limitations added with the amendment and have been further addressed below.
In response to applicant's argument that a sampling thief is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the field of endeavor is analysis of a sample and a holder for a sample being analyzed. A sample thief is a sample holder and therefore is analogous to the field of endeavor.
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.
Claims 1, 3-9, and 18-20 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.
The term “low-z material” in claims 1 and 18-19 is a relative term which renders the claim indefinite. The term “low-z material” 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. The specification provides the examples of low z material as polyimide, PTFE, PEEK, other plastic, and graphite ([0021]; [0022) and that the low z material does not “significantly interfere with the x-ray imaging process” ([0022]). However, it is unclear what materials would be considered low-z and what materials would not be considered low-z, thus, making the metes and bounds of the claim unclear.
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.
Claim(s) 10-11 and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Feser et al. (US 2014/0072095) in view of Groenewoud (US 2021/0302281).
Regarding claims 1 and 5-6, Feser a sample assembly for an x-ray microscopy system (Fig. 1A), comprising:
a sample assembly (110), including an outer tube (110; Fig. 1A) that contains powder samples (104).
Feser does not teach the sample assembly includes a bottom plug sealing an inner bore nor spacers inserted into the outer tube for separating multiple samples in the outer tube. However, Groenewoud teaches a cylindrical sample assembly for holding powder samples to include a bottom plug (114 and 115) sealing an inner bore of the outer tube and spacers inserted into the outer tube for separating multiple samples in the outer tube (Figs 1A-2E). It would have been obvious to one of ordinary skill at the time of the invention to have the cylindrical sample assembly, as taught by Feser, be shaped like the cylindrical sample assembly for holding powder samples, as taught by Groenewoud, which includes a bottom plug sealing an inner bore of the outer tube and spacers inserted into the outer tube for separating multiple samples in the outer tube to achieve the predictable results of holding the powder samples and for the benefit of holding multiple samples with one assembly.
As the system of Feser is utilizing x-rays and the X-rays to pass to the sample, it necessarily follows that the sample assembly be made of material that does not interfere with the x-ray imaging process.
Regarding claim 3, Groenewoud further teaches the outer tube holds three or more samples (Fig. 1A).
Regarding claim 4, Groenewoud further teaches a top plug (113) for sealing a top of the outer tube.
Regarding claim 7, Feser, as modified above, is silent with respect to the material of the outer tube. However, the Examiner is taking Official Notice that plastic is a very well known container material. it would have been obvious to one of ordinary skill at the time of the invention to have the outer tube be constructed from plastic since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 8-9, Feser, as modified above, is silent regarding the size of the inner bore of the outer tube. However, it would have been obvious to one of ordinary skill at the time of the invention to have the inner bore of the outer tube be less than 3 millimeters in diameter, since such a modification would have involved a mere change in the size ofa component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Additionally, it would have been obvious to one of ordinary skill at the time of the invention to have the inner bore of the outer tube be less than 3 millimeters in diameter, since it has been held thatwhere the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 10, 14, 16, and 18-19, Feser teaches an x-ray microscopy system and method (Fig. 1A), comprising:
a source (106) of generating x-rays;
a sample holder (112) for holding samples in the beam;
a sample assembly (110) held by the sample holder, including an outer tube (110; Fig. 1A) that contains powder samples (104); and
a detector (108) for detecting the beam after interaction with the samples.
Feser does not teach the sample assembly includes spacers inserted into the outer tube for separating multiple samples in the outer tube. However, Groenewoud teaches a cylindrical sample assembly for holding powder samples to include spacers inserted into the outer tube for separating multiple samples in the outer tube (Figs 1A-2E). It would have been obvious to one of ordinary skill at the time of the invention to replace the cylindrical sample assembly, as taught by Feser, with the cylindrical sample assembly for holding powder samples, as taught by Groenewoud, which includes spacers inserted into the outer tube for separating multiple samples in the outer tube to achieve the predictable results of holding the powder samples and for the benefit of holding multiple samples with one assembly.
As the system of Feser is utilizing x-rays and the X-rays to pass to the sample, it necessarily follows that the sample assembly be made of material that does not interfere with the x-ray imaging process.
Regarding claim 11, Groenewoud further teaches the sample assembly further includes a bottom plug sealing an inner bore of the outer tube (114 and 115).
Regarding claim 13, Groenewoud further teaches a top plug for sealing a top of the outer tube (113).
Regarding claims 15 and 17, Feser further teaches a positioning stage for moving the sample holder in a y-axis direction and the sample assembly holds different samples distributed along the y-axis (114).
Regarding claim 20, Groenewoud, further teaches the spacers are discrete from each other and sequentially inserted into the outer tube (Figs. 2A-2E).
Conclusion
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 Carolyn Fin whose telephone number is (571)270-1286. The examiner can normally be reached Monday, Wednesday, and Thursday.
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/CAROLYN FIN/Examiner, Art Unit 2884