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
The Examiner agrees with Pg. 7 of Applicant’s Remarks filed 2/2/2026 that the requirement for restriction in the Non-Final Office Action mailed 10/2/2025 did not set forth a legitimate rationale for an examination burden or a lack of unity. The Examiner has therefore examined the entire claim set.
Response to Amendment
The amendment filed February 2, 2026 has been entered.
Claims 1-2, 4-13, and 15-21 remain pending and examined in the application. Claim 22 is newly added, and is pending and examined. Claims 3 and 14 are canceled.
Applicant’s amendments to the Claims have overcome each and every objection and 112(b) rejection previously set forth in the Non-Final Office Action mailed October 2, 2025. However, one claim objection is still outstanding, and new 112(b) rejections have been raised, based on Applicant’s amendments.
Based on Applicant’s amendments and remarks, the previous prior art rejection has been modified to address the claim amendments.
Claim Objections
Claim 16 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim should refer to other claims in the alternative only. See MPEP § 608.01(n). Accordingly, the claim has not been further treated on the merits.
Claim 21 is objected to because of the following informalities:
Regarding claim 21, 4th to Last Ln. – 3rd to Last Ln. recites, “wherein the storage device preferably being arranged in such a way…”, which is grammatically incorrect. It appears that the above limitation needs to be amended to recite, “wherein the storage device preferably is arranged in such a way…” to be grammatically correct.
Further regarding claim 21, 2nd to Last Ln. recites, “bio-logical sample”, which is a typo of “biological sample”.
Appropriate correction is required.
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 1-2, 4-13, 15, and 17-22 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.
Regarding claim 1, 4th to Last Ln. – 3rd to Last Ln. recite, “the sample carrier”. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the above limitation has been examined as, “the sample holder”.
Claims 2, 4-11, and 17-21 are rejected at least for depending on a rejected claim.
Regarding claim 5, 2nd to Last Ln. recites, “a release position”. However, it is unclear if this release position is the same as or different from the release position previously recited in claim 1. For purposes of compact prosecution, the above limitation has been examined as, “the release position”.
Regarding claim 12, 6th to Last Ln. – 5th to Last Ln. recite, “the sample carrier”. There is insufficient antecedent basis for this limitation in the claim. For purposes of compact prosecution, the above limitation has been examined as, “the sample holder”.
Claims 13, 15, and 18-22 are rejected at least for depending on a rejected claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 21 recites the broad recitation “a storage device which is arranged in the container and which has at least one receptacle in which the sample holder with the biological sample can be accommodated”, and the claim also recites “wherein the storage device preferably being arranged in such a way that, when the sample holder with the bio-logical sample is in the release position, the at least one receptacle is arranged below the sample holder with the biological sample” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
(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 22 and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Arnold et al. (US Pub. No. 2018/0209881; hereinafter Arnold; already of record).
Regarding claim 22, Arnold discloses a vitrification apparatus configured to perform a method according to claim 12 ([0044]-[0045], see Fig. 1). The apparatus comprises:
a container for receiving a liquefied gas (see Fig. 1 at container 8).
A transfer device with a mount for holding a sample holder with a base and a pin projecting from the base along a holder axis, wherein the sample holder is configured for attaching the biological sample to the pin and distant from the base and the holder axis is oriented in the starting position substantially perpendicular to the direction of gravity ([0044]-[0045], [0048], see Figs. 1, 4 at adapter 3, which contains tweezers 20 that can hold a support structure 2. The tweezers are capable of holding the claimed sample holder).
A liquid dispenser arranged for adding a liquid to the biological sample in the starting position (see Fig. 1 at dispensing head 1 of dispensing system 0).
The transfer device is configured such the transfer device is configured to position the sample holder with the biological sample mounted in the mount in the starting position and to move it by the mount along the predetermined transfer path from the starting position to the release position ([0044]-[0045], see Fig. 1 at adapter 3 moving from position in A/B to position in C).
The transfer path runs along a circular arc ([0044]-[0045], see Fig. 1 at adapter 3 moving from position in A/B to position in C, which moves along a circular arc).
The transfer device is configured such the movement of the sample holder with the biological sample from the starting position to the release position comprises solely a rotational movement ([0044]-[0045], [0048], see Figs. 1, 4 at adapter 3 moving from position in A/B to position in C, which moves along a circular arc. From position C, the tweezers 20 in adapter 3 can open to drop sample into container 8).
Note: The instant Claims contain a large amount of functional language (ex: “for receiving a liquefied gas…”, “for holding a sample holder…”, “arranged for adding a liquid to the biological sample…”, etc.). However, functional language does not add any further structure to an apparatus beyond a capability. Apparatus claims must distinguish over the prior art in terms of structure rather than function (see MPEP 2114). Therefore, if the prior art structure is capable of performing the function, then the prior art meets the limitation in the claims.
Regarding claim 18, Arnold discloses the vitrification apparatus according to claim 22. Arnold further discloses an irradiation device arranged to optically excite the biological sample in the starting position by at least one light pulse ([0028]. In order to illuminate the sample with light, an irradiation device must intrinsically be present).
Regarding claim 19, Arnold discloses the vitrification apparatus according to claim 22. Arnold further discloses a conditioning device configured to provide a predetermined humidity or temperature in an environment of the biological sample in the starting position ([0053], see Fig. 1).
Regarding claim 20, Arnold discloses the vitrification apparatus according to claim 22. Arnold further discloses a release device by which the sample holder with the biological sample can be released from the transfer device or from the mount for a removal of the sample holder ([0044]-[0045], [0048], see Figs. 1, 4 at adapter 3, which contains tweezers 20 that can hold a support structure 2. The tweezers are capable of releasing the claimed sample holder).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Arnold as applied to claims 22 and 18-20 above, and further in view of Bormans et al. (US Pub. No. 2022/0381656; hereinafter Bormans; already of record).
Regarding claim 21, Arnold discloses the vitrification apparatus according to claim 22.
Arnold fails to explicitly disclose a storage device which is arranged in the container and which has at least one receptacle in which the sample holder with the biological sample can be accommodated, wherein the storage device preferably is arranged in such a way that, when the sample holder with the biological sample is in the release position, the at least one receptacle is arranged below the sample holder with the biological sample.
Bormans is in the analogous field of apparatuses for preparing samples under cryogenic conditions (Bormans [0027]). Bormans teaches a storage device arranged in a container which has at least one receptacle in which a sample holder with a biological sample can be accommodated, where the storage device is arranged such that when the sample holder with the biological sample is in a release position, the at least one receptacle is arranged below the sample holder with the biological sample (Bormans; [0147]-[0149], see Fig. 3A at smaller reservoir 8a within larger reservoir 8, where the smaller reservoir 8a is below sample S’). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Arnold with the teachings of Bormans so that the apparatus comprises a storage device which is arranged in the container and which has at least one receptacle in which the sample holder with the biological sample can be accommodated, where the storage device is arranged in such a way that, when the sample holder with the biological sample is in the release position, the at least one receptacle is arranged below the sample holder with the biological sample, as Bormans teaches that this arrangement will result in a faster vitrification of sample (Bormans; [0147]-[0149], see Fig. 3A), thereby improving throughput.
Allowable Subject Matter
Claims 1 and 12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2, 4-11, 13, 15, and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Arnold, Bormans, Sitte (US Pat. No. 4,563,883; already of record), and Smulders et al. (EP Pub. No. 2381236; hereinafter Smulders; already of record) teach an apparatus and method similar to that claimed. However, regarding claim 1, Sitte, which is considered to be the closest prior art regarding the subject matter of claim 1, does not teach that the movement of the sample holder with the biological sample from the starting position to the release position comprises solely a translatory movement, where the transfer path is inclined with respect to the holder axis. Rather, Sitte teaches that, in the event that the transfer path is inclined with respect to the holder axis, that the movement of the sample holder with the biological sample from the starting position to the release position additionally requires a rotary movement (Sitte; Col. 5 Lns. 25-43, see Figs. 1-3, particularly Fig. 3b showing the tilt of the specimen carrier 9). Modifying Sitte so that the transfer path is inclined with respect to the holder axis and the movement of the sample holder from the starting position to the release position comprises solely a translatory movement would impermissibly alter the principle of operation of Sitte. See MPEP 2143.01(VI).
Still further, regarding claim 17, Sitte, which is considered to be the closest prior art regarding the subject matter of claim 17, does not teach that the transfer device has a mount for holding a sample holder where the holder axis is oriented in the starting position along the direction of gravity, where the transfer path from the starting position to the release position is inclined with respect to the holder axis and the movement of the sample holder from the starting position to the release position comprises solely a translatory movement. Rather, the apparatus of Sitte is only capable of having a transfer path that is inclined with respect to the holder axis when the holder axis is oriented obliquely to the direction of gravity, and further that the movement of the sample holder with the biological sample from the starting position to the release position additionally requires a rotary movement (Sitte; Col. 5 Lns. 25-43, see Figs. 1-3, particularly Fig. 3b showing the tilt of the specimen carrier 9). Modifying Sitte so that the holder axis is oriented in the starting position along the direction of gravity, the transfer path from the starting position to the release position is inclined with respect to the holder axis, and the movement of the sample holder from the starting position to the release position comprises solely a translatory movement would impermissibly alter the principle of operation of Sitte. See MPEP 2143.01(VI).
Still further, regarding claim 12, Arnold, which is considered to be the closest prior art regarding the subject matter of claim 12, does not teach that the movement of the sample holder with the biological sample from the starting position to the release position comprises solely a rotational movement. Rather, Arnold teaches that the movement of the sample holder with the biological sample from the starting position to the release position comprises both a rotational movement and a translatory movement (Arnold; [0044]-[0045], [0060], see Fig. 1 at pick-up/hand-over mechanism 60, which rotates via rotating hinge 61 to move adaptor 3 and support structure 2 containing sample to cryo agent 80 in container 8, and then lowers the support structure 2 into the cryo agent 80 in container 8). Modifying Arnold so that the movement of the sample holder with the biological sample from the starting position to the release position comprises solely a rotational movement would impermissibly alter the principle of operation of Arnold. See MPEP 2143.01(VI).
Claims 2 and 4-11 would be allowable for depending from claim 1, an allowable claim. Claims 13 and 15 would be allowable for depending from claim 12, an allowable claim. Claim 17 would be an allowable claim.
Response to Arguments
Applicant’s arguments filed on 2/2/2026 have been considered but are moot because applicant’s arguments are towards the amended claims and not the current grounds of rejection.
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 John McGuirk whose telephone number is (571)272-1949. The examiner can normally be reached M-F 8am-530pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN MCGUIRK/Examiner, Art Unit 1798
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