DETAILED CORRESPONDENCE
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/19/25 has been entered.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 12/19/25 and 2/23/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Status
Claims 21-22, 24, 26-27, 29-37, 39-44 are pending. Claims 1-20, 23, 25, 28, 38 are canceled.
Response to Arguments
As to the amended claims and remarks, filed on 12/19/25, the previous prior art rejection and double patenting rejection have been withdrawn and modified to address the claim amendments.
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 21-22, 24, 26, 29-34, 37, 39-44 are rejected under 35 U.S.C. 103 as being unpatentable over Kokubo, M (US 20070039435; hereinafter “Kokubo”; already of record) in view of Bolles, M (US 5746855; hereinafter “Bolles”; already of record).
As to claim 21, Kokubo teaches a automated tape transport apparatus (Kokubo; [29] Fig. 1), comprising:
a specimen holding unit for mounting a sample block with an exposed surface of the sample block outwardly facing therefrom (Kokubo teaches 21 holding specimen 20; Fig. 1 [47, 49]);
a tape having a first surface and a second surface opposite the first surface, the second surface comprising an adhesive (Kokubo teaches tape #5 which has a top first surface and a bottom second surface for adhering to sample sections; Figs. 1-2 [46-48, 57-59, 61]);
a tape transport unit configured to transport the tape for adhering the tape to the sample block (Kokubo teaches a supply reel 2 and take up reel 4, where the tape adheres a cut tissue section from the sample block, and where the holding unit 21/20 is between the supply and take up reels; Figs. 1-2);
a tape application unit configured to engage with the tape to apply pressure to the first surface of the tape such that the second surface of the tape is pressed into contact with the sample block to adhere the second surface of the tape to the exposed surface after transport of the tape to a position adjacent and over the exposed surface (Kokubo teaches roller 3b for adhering the specimen to the tape; Fig. 2);
a specimen sectioning unit operable to section the exposed surface of the sample block (Kokubo teaches 22 slicing specimen 20; Fig. 1 [47, 49]);
a processor and a non-transitory computer-readable medium having machine-readable instructions encoded thereon, which when executed by the processor, cause the processor to: receive locational information of the tape and the sample block relative to each other; and based on the locational information, cause the tape application unit and the specimen holding unit relative to each other to, in a first position; and move the tape application unit and the specimen holding unit relative to each other such that, in a second position, the tape application unit is away from the specimen holding unit (Kokubo teaches an automated device which would have a controller. Kokubo also teaches a controller; [22, 28, 29, 55, 60, 61]. The tape application unit of Kokubo presses to collect the specimen as shown in Figure 1, and the position of the application unit/roller 3b can be adjusted by the controller; [60]. Additionally, Kokubo teaches the tape application unit and the holding unit moving relative to each other; Fig. 2B, [58, 59]).
Although Kokubo teaches the application unit moving, Kokubo does not specifically teach a reciprocating actuator; or the processor causing the reciprocating actuator to move the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit. However, Bolles teaches the analogous art of a automated tissue sectioning device (Bolles; Title) with a reciprocating actuator; or the processor causing the reciprocating actuator to move the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit (Bolles teaches the sample block is moved adjacent to the roller whereby the tape adheres to the entire tissue block, and then the section is made, whereby the movement of the block would be via an actuator; Fig. 1, col. 3 line 46-65. Further, Bolles also teaches that the application roller also retracts, in a motorized manner, whereby this retraction would also be an actuator; col. 4 line 38-41. Thus, Bolles teaches a reciprocating actuator on either the specimen holding unit or the tape application roller). It would have been obvious to one of ordinary skill in the art to have modified the tape application unit and specimen holding unit which help adhere the tissue section to the tape during sectioning of Kokubo to have adhered the tape to the entire surface of the tissue prior to sectioning, and to have included a reciprocating actuator to perform this motion as in Bolles because Bolles teaches that it is well known to adhere the tape to the entire section before sectioning (Bolles; col. 3 line 46-65) and because Bolles teaches that the specimen holding unit and tape application unit must move relative to each other in order for proper sectioning to take place (Bolles; col. 3 line 46-65, col. 4 line 38-41).
As to claim 22, modified Kokubo teaches the apparatus of claim 21, wherein the machine-readable instructions, when executed by the processor, further cause the processor to control the tape transport unit to align the tape with the sample block so the second surface of the tape can be pressed over the exposed surface of the sample block (Kokubo teaches aligning the tape with the block to apply the tissue section to the bottom second surface of the tape; Figs. 2).
As to claim 24, modified Kokubo teaches the apparatus of claim 21, wherein the tape application unit is configured to eliminate air bubbles when pressure is applied to the first surface of the tape such that the second surface of the tape is pressed into contact with the sample block (Kokubo teaches a roller 3b that rolls against the surface; Fig. 2. That the application unit is configured to eliminate bubbles is a matter of intended use).
As to claim 29, modified Kokubo teaches the apparatus of claim 21, wherein when the reciprocating actuator moves the tape application unit and the specimen holding unit relative to each other to the first position, the tape covers the exposed surface of the sample block (Kokubo teaches a controller where the tape is dispensed to cover the block; [22, 28, 29, 55, 60, 61], Fig. 1. The modification of the tape of Kokubo to be pressed into the section prior via relative motion as in Bolles has already been discussed above. Bolles; col. 3 line 46-65, col. 4 line 38-41).
As to claim 30, modified Kokubo teaches the apparatus of claim 41, further comprising: a slide; and a slide transfer station for transferring the sectioned sample from the tape to the slide (Kokubo teaches slide transfer region F/G; Fig. 1 [50]).
As to claim 31, modified Kokubo teaches the apparatus of claim 30, wherein the slide comprises an adhesive for adhering the sectioned sample to the slide (Kokubo teaches the slide adhering to the sliced sample; [50] Fig. 1).
As to claim 32, modified Kokubo teaches the apparatus of claim 21, wherein the specimen sectioning unit comprises a knife-block with a blade handler for holding a changeable knife blade (Kokubo teaches 22 slicing specimen 20; Fig. 1 [47, 49]).
As to claim 33, modified Kokubo teaches the apparatus of claim 21, wherein the specimen holding unit comprises a chuck head and a chuck adapter for holding the sample block (Kokubo teaches 22 slicing specimen 20, where a microtome 21 would include a chuck head/adapter; Fig. 1 [47, 49]).
As to claim 34, modified Kokubo teaches the apparatus of claim 21, wherein the first position, the tape application unit applies pressure on and is in contact with the first surface of the tape; and in the second position, the tape application unit away from the first surface of the tape (The modification of the tape of Kokubo to be pressed into the section prior via relative motion as in Bolles has already been discussed above. Bolles; col. 3 line 46-65, col. 4 line 38-41).
As to claim 37, modified Kokubo teaches the apparatus of claim 21, further comprising: a sensor configured to acquire the locational information of the tape and the sample block relative to each other, wherein the machine-readable instructions, when executed by the processor, further cause the processor to receive the locational information from the sensor (Kokubo teaches a sensor which determines the locations information of the slice and tape; [59]).
As to claim 39, Kokubo teaches a automated tape transport apparatus (Kokubo; [29] Fig. 1), comprising:
a specimen holding unit for mounting a sample block with an exposed surface of the sample block outwardly facing therefrom (Kokubo teaches 21 holding specimen 20; Fig. 1 [47, 49]);
a tape having a first surface and a second surface opposite the first surface, the second surface comprising an adhesive; a tape transport unit configured to transport the tape (Kokubo teaches tape #5 which has a top first surface and a bottom second surface for adhering to sample sections; Figs. 1-2 [46-48, 57-59, 61]);
a tape application unit configured to engage with the tape to apply pressure to the first surface of the tape to press the second surface of the tape into contact with the sample block to adhere the second surface of the tape to the exposed surface (Kokubo teaches roller 3b for adhering the specimen to the tape; Fig. 2);
a processor and a non-transitory computer-readable medium having machine-readable instructions encoded thereon, which when executed by the processor, cause the processor to: receive locational information of the tape and the sample block relative to each other; and based on the locational information, cause the tape application unit and the specimen holding unit relative to each other to, in a first position; and move the tape application unit and the specimen holding unit relative to each other such that, in a second position, the tape application unit is away from the specimen holding unit (Kokubo teaches an automated device which would have a controller. Kokubo also teaches a controller; [22, 28, 29, 55, 60, 61]. The tape application unit of Kokubo presses to collect the specimen as shown in Figure 1, and the position of the application unit/roller 3b can be adjusted by the controller; [60]. Additionally, Kokubo teaches the tape application unit and the holding unit moving relative to each other; Fig. 2B, [58, 59]).
Although Kokubo teaches the application unit moving, Kokubo does not specifically teach the processor causing the movement of the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit. However, Bolles teaches the analogous art of a automated tissue sectioning device (Bolles; Title) with a reciprocating actuator; or the processor causing the movement of the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit (Bolles teaches the sample block is moved adjacent to the roller whereby the tape adheres to the entire tissue block, and then the section is made; Fig. 1, col. 3 line 46-65. Further, Bolles also teaches that the application roller also retracts, in a motorized manner; col. 4 line 38-41. Thus, Bolles teaches moving either the specimen holding unit or the tape application roller). It would have been obvious to one of ordinary skill in the art to have modified the tape application unit and specimen holding unit which help adhere the tissue section to the tape during sectioning of Kokubo to have adhered the tape to the entire surface of the tissue prior to sectioning, and to have moved relative to each other as in Bolles because Bolles teaches that it is well known to adhere the tape to the entire section before sectioning (Bolles; col. 3 line 46-65) and because Bolles teaches that the specimen holding unit and tape application unit must move relative to each other in order for proper sectioning to take place (Bolles; col. 3 line 46-65, col. 4 line 38-41).
As to claim 40, Kokubo teaches a automated tape transport apparatus (Kokubo; [29] Fig. 1), comprising:
a specimen holding unit for mounting a sample block with an exposed surface of the sample block outwardly facing therefrom (Kokubo teaches 21 holding specimen 20; Fig. 1 [47, 49]);
a tape having a first surface and a second surface opposite the first surface, the second surface comprising an adhesive (Kokubo teaches tape #5 which has a top first surface and a bottom second surface for adhering to sample sections; Figs. 1-2 [46-48, 57-59, 61]);
a tape application unit configured to engage with the tape to apply pressure to the first surface of the tape to press the second surface of the tape into contact with the sample block to adhere the second surface of the tape to the exposed surface (Kokubo teaches roller 3b for adhering the specimen to the tape; Fig. 2);
a specimen sectioning unit operable to section the exposed surface of the sample block for adherence of a cut tissue section to the second surface of the tape to create a sectioned sample (Kokubo teaches 22 slicing specimen 20; Fig. 1 [47, 49]);
a processor and a non-transitory computer-readable medium having machine-readable instructions encoded thereon, which when executed by the processor, cause the processor to: receive locational information of the tape and the sample block relative to each other; and based on the locational information, cause the tape application unit and the specimen holding unit relative to each other to, in a first position; and move the tape application unit and the specimen holding unit relative to each other such that, in a second position, the tape application unit is away from the specimen holding unit (Kokubo teaches an automated device which would have a controller. Kokubo also teaches a controller; [22, 28, 29, 55, 60, 61]. The tape application unit of Kokubo presses to collect the specimen as shown in Figure 1, and the position of the application unit/roller 3b can be adjusted by the controller; [60]. Additionally, Kokubo teaches the tape application unit and the holding unit moving relative to each other; Fig. 2B, [58, 59]).
Although Kokubo teaches the application unit moving, Kokubo does not specifically teach the processor causing the movement of the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit. However, Bolles teaches the analogous art of a automated tissue sectioning device (Bolles; Title) with a reciprocating actuator; or the processor causing the movement of the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape to section the exposed surface of the sample block by the specimen sectioning unit (Bolles teaches the sample block is moved adjacent to the roller whereby the tape adheres to the entire tissue block, and then the section is made; Fig. 1, col. 3 line 46-65. Further, Bolles also teaches that the application roller also retracts, in a motorized manner; col. 4 line 38-41. Thus, Bolles teaches moving either the specimen holding unit or the tape application roller). It would have been obvious to one of ordinary skill in the art to have modified the tape application unit and specimen holding unit which help adhere the tissue section to the tape during sectioning of Kokubo to have adhered the tape to the entire surface of the tissue prior to sectioning, and to have moved relative to each other as in Bolles because Bolles teaches that it is well known to adhere the tape to the entire section before sectioning (Bolles; col. 3 line 46-65) and because Bolles teaches that the specimen holding unit and tape application unit must move relative to each other in order for proper sectioning to take place (Bolles; col. 3 line 46-65, col. 4 line 38-41).
As to claim 41, modified Kokubo teaches the apparatus of claim 21, wherein the machine-readable instructions, when executed by the processor, further cause the processor to control the specimen sectioning unit to, only after the tape is pressed into contact with the exposed surface of the sample block, section the exposed surface of the sample block for adherence of a cut tissue section to the second surface of the tape to create a sectioned sample (The modification of the tape of Kokubo to be pressed into the section prior to sectioning as in Bolles has already been discussed above. Bolles teaches sectioning only after pressing the tape into contact; col. 3 line 46-65, col. 4 line 38-41).
As to claim 42, modified Kokubo teaches the apparatus of claim 41, wherein, when the tape is pressed into contact with the exposed surface of the sample block, the tape covers an entirety of the exposed surface of the sample block (The modification of the tape of Kokubo to be pressed into the section prior to sectioning and to have the tape covering the entirety of the surface as in Bolles has already been discussed above. Bolles teaches pressing the tape into the entire surface; col. 3 line 46-65, col. 4 line 38-41).
As to claim 43, modified Kokubo teaches the apparatus of claim 21, wherein the locational information further comprises information on a location of the tape application unit relative to the tape and the sample block (Kokubo teaches a sensor which determines the locations information of the slice and tape; [59]).
As to claim 44, modified Kokubo teaches the apparatus of claim 43, further comprising a sensor configured to acquire the locational information, wherein the machine-readable instructions, when executed by the processor, further cause the processor to receive the locational information from the sensor (Kokubo teaches a sensor which determines the locations information of the slice and tape; [59]).
Claims 26, 35, 36 are rejected under 35 U.S.C. 103 as being unpatentable over Kokubo, M (US 20070039435; hereinafter “Kokubo”; already of record) in view of Bolles, M (US 5746855; hereinafter “Bolles”; already of record) in view of Miyazawa et al (US 20050126311; hereinafter “Miyazawa”; already of record).
As to claim 26, modified Kokubo teaches the apparatus of claim 21, wherein: the tape transport unit comprises a supply reel at an upstream end and a take up reel at a downstream end; and the apparatus further comprises a tape guide positioned between the supply reel and the take up reel, wherein the tape guide is in contact with the tape (Kokubo teaches a supply reel 2 and a take up reel 4; Fig. 1-2. Kokubo teaches multiple tape guides as rollers 3a, 3c, 3d, 3e, each in contact with the tape and positioned between the supply and take up reel to maintain alignment of the tape; Fig. 1).
Although Kokubo teaches tape guide rollers to help position the tape, Kokubo does not specifically teach at least one tape guide roller configured to be movable with respect to the specimen holding unit to maintain alignment of the tape with the sample block, or the processor configured to move the tape guide to a first position when the tape is aligned with the specimen holding unit; and move the tape guide to a second position when at least a portion of the tape is removed from the sample block. However, Miyazawa teaches the analogous art of a tape transport apparatus (Miyazawa; Fig. 1-4) with at least one tape guide roller configured to be movable with respect to the specimen holding unit to maintain alignment of the tape with the sample block, or the processor configured to move the tape guide to a first position when the tape is aligned with the specimen holding unit; and move the tape guide to a second position when at least a portion of the tape is removed from the sample block (Miyazawa teaches guide roller 40 which is moved with respect to the specimen; [41, 42, 43, 48, 51], Figs 1-4). It would have been obvious to one of ordinary skill in the art to have modified the controller and one of the guide rollers of Kokubo to have the guide roller move to/from the specimen as in Miyazawa because Miyazawa teaches that using a movable guide roller helps to adjust the angle to easily adhere tissue sections (Miyazawa; [42]) and also helps to ensure tension is on the tape for proper winding (Miyazawa; [43]).
As to claim 35, modified Kokubo teaches the apparatus of claim 26, wherein the tape guide comprises at least one roller (Kokubo also teaches multiple rollers 3a, 3c, 3d, 3e, each in contact with the tape and positioned between the supply and take up reel to maintain alignment of the tape; Fig. 1. Further, the modification of Kokubo to include guide rollers as in Miyazawa has already been discussed above in claim 21, and Miyazawa teaches multiple rollers 35 and 40; [41, 42, 43, 48, 51]).
As to claim 36, modified Kokubo teaches the apparatus of claim 26, wherein the machine-readable instructions, when executed by the processor, further cause the processor to control movement of the tape guide to selectively tension the tape (Kokubo teaches several rollers, including a roller 3b as part of the application unit; Fig. 1. Kokubo also teaches multiple rollers 3a, 3c, 3d, 3e, each in contact with the tape and positioned between the supply and take up reel to maintain alignment of the tape; Fig. 1. Further, the modification of Kokubo to include guide rollers as in Miyazawa has already been discussed above in claim 21, and Miyazawa teaches multiple rollers 38, as well as rollers 35 and 40; [41, 42, 43, 48, 51]).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Kokubo in view of Bolles in view of Miyazawa in view of Goldstein et al (US 6720191; hereinafter “Goldstein”; already of record).
As to claim 27, modified Kokubo teaches the apparatus of claim 26, wherein: when the tape guide is in the first position, an angle formed by a first line between the specimen holding unit and the supply reel and a second line between the specimen holding unit and the tape guide is about 180 degrees; and when the tape guide is in the second position, the angle formed by the first line between the specimen holding unit and the supply reel and the second line between the specimen holding unit and the tape guide is at an obtuse angle.
As to claim 27, modified Kokubo teaches the apparatus of claim 26, with the tape transport unit with a supply reel at an upstream end and a take up reel at a downstream end (Kokubo; Fig. 1), the tape application unit, controller, and specimen holding unit (see claim 21 above) and where the at least one tape guide is in the first position and second position (see claim 21/26 above).
Modified Kokubo does not specifically teach when the roller is in the apply position, an angle formed by a first line between the specimen holding unit and the supply reel and a second line between the specimen holding unit and the tape guide is about 180 degrees; and when the roller is in the remove position, the angle formed by the first line between the specimen holding unit and the supply reel and the second line between the specimen holding unit and the tape guide is at an obtuse angle; wherein the tape is adjacent to and aligned with the exposed surface of the sample block when the tape guide is in the apply position. However, Goldstein teaches the analogous art of a tape supply reel 16 with a specimen holding unit (Goldstein teaches the region of application unit P and S/32; Fig. 1-2 and 7), a tape guide axially spaced from the tape application unit (Goldstein teaches guide 24/26 axially spaced from the application unit P; Fig. 1-2, 7), wherein: the tape guide is movable from an apply position to a remove position (Goldstein teaches guide 24/26 in first position in Fig. 2A and second position in Fig. 2C col. 6 line 60-col. 7 line 21); and the tape guide is in the apply position when the tape is advanced to align with the specimen holding unit and the tape guide remains in the apply position when tape application unit moves to the second position (Goldstein teaches that the tape is advanced at the time point from where P is in the first position prior to figure 2A until figures 2A to 2B where the guide 24/26 is aligned with the specimen holding unit 32 and remains in the apply position in Figure 2A. The tape guide 26 could also be considered in the apply position in figure 2B); when the tape guide is in the apply position, an angle formed by a first line between the specimen holding unit and the supply reel and a second line between the specimen holding unit and the tape guide is about 180 degrees (Goldstein teaches a line from 16 to P to 24/26 which is about 180 degrees creating roughly a straight line; Fig. 2A); and when the tape guide is in the remove position, the angle formed by the first line between the specimen holding unit and the supply reel and the second line between the specimen holding unit and the tape guide is at an obtuse angle (Goldstein teaches a line from 16 to P to 24/26 which creates an obtuse angle facing towards the top of Figure 2C since the guide 24/26 has moved upwards); wherein the tape is adjacent to and aligned with the exposed surface of the sample block when the tape guide is in the apply position (Goldstein teaches guide 24/26 in first position in Fig. 2A and second position in Fig. 2C col. 6 line 60-col. 7 line 21). One of ordinary skill in the art at the time the invention was filed would have been motivated to modify the tape guide rollers of modified Kokubo to have been configured as the tape guide in Goldstein because Goldstein teaches that the configuration of the tape guide helps to ensure that the tape is a proper distance from the tape application unit P and also helps to collect the next sample (Goldstein; col. 7 lines 15-20).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11630035 B2. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of ‘035 teaches an automated tape transport apparatus (‘035; claim 1), comprising:
a specimen holding unit for mounting a sample block with an exposed surface of the sample block outwardly facing therefrom (‘035; claim 1);
a tape having a first surface and a second surface opposite the first surface, the second surface comprising an adhesive (‘035; claim 1);
a tape transport unit configured to transport the tape for adhering the tape to the sample block (‘035; claim 1);
a tape application unit configured to engage with the tape to apply pressure to the first surface of the tape such that the second surface of the tape is pressed into contact with the sample block to adhere the second surface of the tape to the exposed surface after transport of the tape to a position adjacent and over the exposed surface (‘035; claim 1);
a specimen sectioning unit operable to section the exposed surface of the sample block (‘035; claim 1);
a reciprocating actuator (‘035; claim 1);
a processor and a non-transitory computer-readable medium having machine-readable instructions encoded thereon, which when executed by the processor (‘035; claim 1 teaches a controller), cause the processor to: receive locational information of the tape and the sample block relative to each other; and based on the locational information, cause the reciprocating actuator to move the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape into contact with the exposed surface of the sample block prior to beginning to section the exposed surface of the sample block by the specimen sectioning unit; and move the tape application unit and the specimen holding unit relative to each other such that, in a second position, the tape application unit is away from the specimen holding unit (‘035; claim 1 teaches that based on the locational information that the application unit moves between the first and second positions. ‘035 in claim 1 states that the tape is adhered and then the specimen is sectioned).
Thus, all of the elements of the invention recited in the instant claims are encompassed by the claims of US Patent No. 11630035 B2.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10473557. Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of ‘557 teaches an automated tape transport apparatus (‘557; claim 1), comprising:
a specimen holding unit for mounting a sample block with an exposed surface of the sample block outwardly facing therefrom (‘557; claim 1);
a tape having a first surface and a second surface opposite the first surface, the second surface comprising an adhesive (‘557; claim 1);
a tape transport unit configured to transport the tape for adhering the tape to the sample block (‘557; claim 1);
a tape application unit configured to engage with the tape to apply pressure to the first surface of the tape such that the second surface of the tape is pressed into contact with the sample block to adhere the second surface of the tape to the exposed surface after transport of the tape to a position adjacent and over the exposed surface (‘557; claim 1);
a specimen sectioning unit operable to section the exposed surface of the sample block (‘557; claim 1);
a reciprocating actuator (‘557; claim 1 teaches the reciprocating actuator as part of the application unit);
a processor and a non-transitory computer-readable medium having machine-readable instructions encoded thereon, which when executed by the processor (‘557; claim 1 teaches a controller), cause the processor to: receive locational information of the tape and the sample block relative to each other; and based on the locational information, cause the reciprocating actuator to move the tape application unit and the specimen holding unit relative to each other to, in a first position, press the tape into contact with the exposed surface of the sample block prior to beginning to section the exposed surface of the sample block by the specimen sectioning unit; and move the tape application unit and the specimen holding unit relative to each other such that, in a second position, the tape application unit is away from the specimen holding unit (‘557; claim 1 teaches that based on the locational information that the application unit moves via the actuator between the first and second positions. ‘557in claim 1 states that the tape is adhered and then the specimen is sectioned).
Thus, all of the elements of the invention recited in the instant claims are encompassed by the claims of US Patent No. 10473557 B2.
Response to Arguments
Applicant’s arguments, filed on 12/19/25, have been considered but are moot because the arguments are towards the amended claims and not the current ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN R WHATLEY whose telephone number is (571)272-9892. The examiner can normally be reached Mon- Fri 8am-5pm.
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/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798
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