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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/28/2026 has been entered.
Response to Amendment
The amendments and remarks, filed on 5/28/2026, have been entered. The previous prior art rejection is modified to address the claim amendments.
The amendments and remarks, filed on 5/28/2026, have been entered. The claim amendments overcome the previous 112(b) rejection of claim 1.
Claim Status
Claim 1-9 are pending and being examined.
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 1-9 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.
Claim 1 recites the limitation “the first paraffin-filled bottle holding portion and the second paraffin-filled bottle holding portion” in lines 21-22. There is insufficient antecedent basis for this limitation in the claim, thus the limitation is unclear. Claims 2-9 are rejected by virtue of dependency on claim 1.
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 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.
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(s) 1 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Ulbrich et al (US 20100216222 A1; hereinafter “Ulbrich”; already of record on IDS filed 3/4/2024) in view of Lihl et al (US 20050118670 A1; hereinafter “Lihl”; already of record).
Regarding claim 1, Ulbrich teaches a paraffin-embedded block preparation device (Ulbrich; Abstract) comprising:
a holding portion configured to hold a cassette holder including a single cassette and a specimen vertically1 (Ulbrich; Fig. 2, 3; para [55]; a transport device 4 can hold a plurality of cassettes 5; the Examiner notes that the limitation of “the cassette holder including a single cassette” is intended use of the holding portion, thus a sector could hold only a “single” cassette if only one cassette is placed inside), the cassette holder being an independent unit configured to individually and detachably contain the single cassette, and having a gripped portion formed at an upper end thereof to be directly gripped by the cassette holder gripper (Ulbrich; para [23]; the sector piece 23 has a coupling element 33, with which the sector piece 23 can be gripped by the coupling element 20 of the transport apparatus 6) such that the cassette holder is suspended and moved vertically (Ulbrich; para [40, 67]; a robot arm could have a gripping or hooking element, which can be moved via an arm construction with a housing part of the tissue infiltration device in vertical and/or horizontal direction…The sector pieces 23 of the lower transport device 4 are vertically aligned with respect to the sector pieces 23 of the upper transport device 4)2;
a chemical liquid bottle holding portion provided with a plurality of chemical liquid bottles filled with a chemical liquid (Ulbrich; Fig. 1; para [58]; the four partial containers 11 a, 11 b, 11 c and 11 d can be filled with liquid 12 independently from one another; the examiner interprets the chemical liquid bottle holding portion to be the opening which holds the liquid and sector pieces);
a paraffin-filled bottle holding portion provided with a first paraffin-filled bottle filled with liquid paraffin (Ulbrich; Fig. 1; para [58]; The liquid container 15 serves for paraffining the samples and can be filled with a liquid 16);
a head including a cassette holder gripper configured to grip the cassette holder (Ulbrich; Fig. 1; para [58]; a coupling element 20 with which a transport device 4 can be coupled);
a first conveying unit configured to move the head in a horizontal direction or a vertical direction (Ulbrich; Fig. 1; para [58]; the transport apparatus 6 is designed in the form of a rail system and has a rail 18); and
a control unit including a processor and a storage configured to control the head and the first conveying unit (Ulbrich; para [30, 57]; The control unit could be designed such that depending on the determined information on the cassettes or the respective transport device/sector pieces the sequence of operations or a processing order of the individual transport devices/sector pieces…the tissue infiltration device 1 comprises a control device 10 by means of which the transport apparatus 6 can be controlled; examiner notes that the control unit comprises the “storage” as it would be required to perform sequences of operation), wherein
the holding portion includes a first holding portion and a second holding portion (Ulbrich; Fig. 1; para [60]; the transport device 4 can hold several sector pieces 23; Ulbrich teaches a plurality of transport devices as seen in Fig. 1, thus the first holding portion is interpreted as one transport device 4 and the second holding portion is interpreted as a different transport device 4),
the first holding portion and the second holding portion respectively holds a first cassette holder and a second cassette holder, each of which is the cassette holder (Ulbrich; Fig. 5, 6; para [60, 61]; the transport device 4 can hold several sector pieces 23…A sector piece 23 can hold a plurality of cassettes 5; Ulbrich teaches each transport device would hold their respective cassette holder),
the chemical liquid bottle holding portion includes a first chemical liquid bottle holding portion and a second chemical liquid bottle holding portion (Ulbrich; Fig. 1; para [58]; The liquid container 11 has four partial containers 11 a, 11 b, 11 c and 11 d which are separated from one another by partitions 17; examiner interprets the first chemical liquid bottle holding portion to be one of the partial containers, and the second chemical liquid bottle holding portion to be a different partial container separated by the partition), the paraffin-filled bottle holding portion includes a first paraffin-filled bottle holding portion comprises a paraffin-filled bottle configured to receive only the first cassette holder (Ulbrich; Fig. 1; para [58]; The liquid container 15 serves for paraffining the samples and can be filled with a liquid 16 suitable for this), and
the control unit causes the cassette holder gripper to grip the first cassette holder and inserts the first cassette holder individually into the chemical liquid bottle provided to the first chemical liquid bottle holding portion and the paraffin-filled bottle provided to the first paraffin-filled bottle holding portion (Ulbrich; Fig. 1; para [28]; the tissue infiltration device has a control device with which the transport apparatus and/or components of the tissue infiltration device can be controlled…The control device could be designed such that for each transport device or, respectively, for each sector piece an individual sequence of operations can be realized).
1 The limitation is directed to the function and/or the manner of operating the holding portion, all the structural limitations of the claim have been disclosed by Ulbrich and the holding portion of Ulbrich is capable of being “configured to hold a cassette holder including a single cassette and a specimen vertically”. As such, it is deemed that the claimed holding portion is not differentiated from the holding portion of Ulbrich (see MPEP §2114).
2 The limitations are directed to an element that is not positively recited. Specifically, the “cassette holder” is a functional limitation of the holding portion as discussed above. Thus, the limitations directed to the cassette holder such as “having a gripped portion formed at an upper end thereof to be directly gripped by the cassette holder gripper such that the cassette holder is suspended and moved vertically” is not required. Further, the limitation is directed to the function and/or the manner of operating the cassette holder. The limitation “configured to individually and detachably contain the single cassette” is interpreted as intended use and/or functional language to a limitation that is not positively recited. As such, it is deemed that the claimed cassette holder is not differentiated from the cassette holder of Ulbrich (see MPEP §2114).
Ulbrich does not teach the paraffin-filled bottle holding portion includes a second paraffin-filled bottle holding portion, the second paraffin-filled bottle holding portion comprises a second paraffin-filled bottle configured to receive only the second cassette holder, the control unit causes the cassette holder gripper to grip the second cassette holder and inserts the second cassette holder into the chemical liquid bottle provided to the second chemical liquid bottle holding portion and the paraffin-filled bottle provided to the second paraffin-filled bottle holding portion, such that the first and second cassette holders are processed independently from each other.
However, Lihl teaches an analogous art of a device for tissue processing (Lihl; Abstract) comprising a paraffin-filled bottle holding portion includes a first paraffin-filled bottle holding portion comprises a paraffin-filled bottle configured to receive only a first cassette holder, and a second paraffin-filled bottle holding portion comprises a paraffin-filled bottle configured to receive only a second cassette holder (Lihl; Fig. 2, 7; para [27, 32]; Several cassettes (50) are used in a common holder (40), which is lowered into or lifted out of the various process chambers by means of the transport mechanism (6)…A fourth process chamber (14) that is filled with wax is provided for in position P4. A fifth process chamber (15) that is also filled with wax is provided for in position P5). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the paraffin-filled bottle holding portion of Ulbrich to comprise the second paraffin-filled bottle holding portion as taught by Lihl, because Lihl teaches that two wax baths (wax-filled process chambers) are commonly used, because the wax in the fourth process chamber (14), which is the first wax bath, generally becomes contaminated by solvent residue (Lihl; para [32]).
Regarding claim 9, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 1, wherein the control unit causes the cassette holder gripper to grip the cassette holder and moves the cassette holder up and down inside the chemical liquid bottle (Ulbrich; Fig. 1, 5; para [63]; The sector piece 23 has a coupling element 33, with which the sector piece 23 can be gripped by the coupling element 20 of the transport apparatus 6. Accordingly, the sector piece 23 can be separately transported by the transport apparatus 6).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Ulbrich in view of Lihl, and in further view of Marsch (US 20200166439 A1; hereinafter “Marsch”; already of record).
Regarding claim 2, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 1, wherein
the chemical liquid bottle includes a first chemical liquid bottle (Ulbrich; Fig. 1; para [58]; the four partial containers 11 a, 11 b, 11 c and 11 d can be filled with liquid 12 independently from one another) and a second chemical liquid bottle (Ulbrich; Fig. 1; para [58]; The liquid container 11 has four partial containers 11 a, 11 b, 11 c and 11 d which are separated from one another by partitions 17),
the first chemical liquid bottle holding portion and the second chemical liquid bottle holding portion are respectively provided with the first chemical liquid bottle and the second chemical liquid bottle (Ulbrich; Fig. 1, 6; examiner interprets the first chemical liquid bottle holding portion to be the position where the first sector piece is positioned within the chemical liquid bottle holding portion, and the second chemical liquid bottle holding portion to be the second sector piece positioned within the chemical liquid bottle holding portion), and
the control unit inserts the first cassette holder into the first chemical liquid bottle provided to the first chemical liquid bottle holding portion, determines whether a predetermined period of time has elapsed after insertion of the first cassette holder into the first chemical liquid bottle, and when the predetermined period of time has elapsed, takes out the first cassette holder from the first chemical liquid bottle and inserts the first cassette holder into the second chemical liquid bottle provided to the first chemical liquid bottle holding portion, and inserts the second cassette holder into the first chemical liquid bottle provided to the second chemical liquid bottle holding portion, determines whether a predetermined period of time has elapsed after insertion of the second cassette holder into the first chemical liquid bottle, and when the predetermined period of time has elapsed, takes out the second cassette holder from the first chemical liquid bottle and inserts the second cassette holder into the second chemical liquid bottle provided to the second chemical liquid bottle holding portion (Ulbrich; para [6]; the transport of a transport device with cassettes and hence with samples from an input station, at which a transport device is transferred to the tissue infiltration device, to the first liquid container of the sequence and into the same, the removal from the liquid container after a predeterminable reaction time, the transport of a transport device to the next liquid container and into the same etc., and, finally the transport to an output or transfer station, at which a processed transport device can be output or removed from the tissue infiltration device).
Ulbrich does not teach the first chemical liquid bottle filled with formalin and the second chemical liquid bottle filled with ethanol.
However, Marsch teaches an analogous art of preparing a tissue sample (Marsch; Abstract) comprising a first chemical liquid filled with formalin (Marsch; para [69]; In a first step, first dispensing vessel 10 a, which is filled e.g. with an aqueous formalin solution) and a second chemical liquid filled with ethanol (Marsch; para [70]; second dispensing vessel 10 b, which is filled e.g. with ethanol). Examiner further finds that the prior art contained the first chemical liquid and the second chemical liquid which differed from the claimed the liquid in the first chemical liquid bottle and the second chemical liquid bottle filled by the substitution of component(s) (i.e., the first chemical liquid and the second chemical liquid) with other component(s) (i.e., formalin and ethanol, respectively), and the substituted components and their functions were known in the art as above set forth. An ordinarily skilled artisan at the time of invention could have substituted one known element with another (i.e., the first chemical liquid and the second chemical liquid), and the results of the substitution (i.e., the first chemical liquid bottle filled with formalin and the second chemical liquid bottle filled with ethanol) would have been predictable. Therefore, pursuant to MPEP §2143 (I), Examiner concludes that it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the first chemical liquid and the second chemical liquid of with the first chemical liquid bottle filled with formalin and the second chemical liquid bottle filled with ethanol of Marsch, since the result would have been predictable.
Regarding claim 3, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 2, wherein
the chemical liquid bottle includes a third chemical liquid bottle (Ulbrich; Fig. 1; para [58]; The liquid container 11 has four partial containers 11 a, 11 b, 11 c and 11 d which are separated from one another by partitions 17),
the first chemical liquid bottle holding portion and the second chemical liquid bottle holding portion are each provided with the third chemical liquid bottle (Ulbrich; Fig. 1, 6; examiner interprets the first chemical liquid bottle holding portion to be the position where the first sector piece is positioned within the chemical liquid bottle holding portion, and the second chemical liquid bottle holding portion to be the second sector piece positioned within the chemical liquid bottle holding portion), and
the control unit inserts the first cassette holder into the second chemical liquid bottle provided to the first chemical liquid bottle holding portion, determines whether a predetermined period of time has elapsed after insertion of the first cassette holder into the second chemical liquid bottle, and when the predetermined period of time has elapsed, takes out the first cassette holder from the second chemical liquid bottle and inserts the first cassette holder into the third chemical liquid bottle provided to the first chemical liquid bottle holding portion, and inserts the second cassette holder into the second chemical liquid bottle provided to the second chemical liquid bottle holding portion, determines whether a predetermined period of time has elapsed after insertion of the second cassette holder into the second chemical liquid bottle, and when the predetermined period of time has elapsed, takes out the second cassette holder from the second chemical liquid bottle and inserts the second cassette holder into the third chemical liquid bottle provided to the second chemical liquid bottle holding portion (Ulbrich; para [6]; the transport of a transport device with cassettes and hence with samples from an input station, at which a transport device is transferred to the tissue infiltration device, to the first liquid container of the sequence and into the same, the removal from the liquid container after a predeterminable reaction time, the transport of a transport device to the next liquid container and into the same etc., and, finally the transport to an output or transfer station, at which a processed transport device can be output or removed from the tissue infiltration device).
Ulbrich does not teach the third chemical liquid bottle filled with xylene.
However, Marsch teaches an analogous art of preparing a tissue sample (Marsch; Abstract) comprising a third chemical liquid filled with xylene (Marsch; para [72]; third dispensing vessel 10 c, which is filled e.g. with xylene). Examiner further finds that the prior art contained the third chemical liquid which differed from the claimed the liquid in the third chemical liquid bottle filled by the substitution of component(s) (i.e., the third chemical liquid) with other component(s) (i.e., xylene), and the substituted components and their functions were known in the art as above set forth. An ordinarily skilled artisan at the time of invention could have substituted one known element with another (i.e., the third chemical liquid), and the results of the substitution (i.e., the third chemical liquid bottle filled with xylene) would have been predictable. Therefore, pursuant to MPEP §2143 (I), Examiner concludes that it would have been obvious to an ordinarily skilled artisan at the time of invention to substitute the third chemical liquid of with the third chemical liquid bottle filled with xylene of Marsch, since the result would have been predictable.
Regarding claim 4, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 2, wherein the control unit inserts the first cassette holder into the first chemical liquid bottle provided to the first chemical liquid bottle holding portion, determines whether the predetermined period of time has elapsed after insertion of the first cassette holder into the first chemical liquid bottle, and inserts the second cassette holder into the first chemical liquid bottle provided to the second chemical liquid bottle holding portion until the predetermined period of time has elapsed (Ulbrich; para [6]; the transport of a transport device with cassettes and hence with samples from an input station, at which a transport device is transferred to the tissue infiltration device, to the first liquid container of the sequence and into the same, the removal from the liquid container after a predeterminable reaction time, the transport of a transport device to the next liquid container and into the same etc., and, finally the transport to an output or transfer station, at which a processed transport device can be output or removed from the tissue infiltration device).
Regarding claim 5, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 1, comprising:
a placement portion on which the cassette holder is placed horizontally (Ulbrich; Fig. 3, 5; cassettes are contained in the transport device as seen in Fig. 3 and 5);
a second conveying unit configured to move the placement portion in the horizontal direction (Ulbrich; Fig. 1; para [58]; On the rail 18, a transport arm 19 is movably guided), wherein
the head changes a position and orientation of the cassette holder gripper from a state in which the cassette holder gripper holds the cassette holder vertically to a state in which the cassette holder gripper holds the cassette holder horizontally (Ulbrich; Fig. 3; para [63]; the sector piece 23 has a coupling element 33, with which the sector piece 23 can be gripped by the coupling element 20 of the transport apparatus 6. Accordingly, the sector piece 23 can be separately transported by the transport apparatus 6).
Modified Ulbrich does not teach a paraffin discharge unit including a nozzle configured to discharge paraffin; a cooling unit including a cooling mechanism and a flat surface portion on which the cassette holder is placed horizontally, and the control unit changes the position and orientation of the cassette holder gripper to horizontally place the cassette holder held vertically, controls the head and the first conveying unit to place the cassette holder on the placement portion, and controls the paraffin discharge unit and the second conveying unit to move the placement portion in the horizontal direction and dispose the placement portion below the nozzle to discharge paraffin from the nozzle in a state in which the cassette holder is disposed below the nozzle, and moves the placement portion from below the nozzle in the horizontal direction to place the cassette holder on the flat surface portion.
However, Marsch teaches an analogous art of preparing a tissue sample (Marsch; Abstract) comprising a paraffin discharge unit including a nozzle configured to discharge paraffin (Marsch; para [75]; In a fourth working phase, control is then applied to fourth dispensing vessel 10 d, which is filled with liquid wax (paraffin)); a cooling unit including a cooling mechanism and a flat surface portion on which the cassette holder is placed horizontally (Marsch; para [77]; a cooling system (not shown), for example a ventilation system, is switched on, with the result that the wax present in container 4 solidifies into a wax block 27). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the paraffin-embedded block preparation device of Ulbrich to comprise the paraffin discharge unit as taught by Marsch, because Marsch teaches that the dispensing vessel forces the correct quantity of liquid wax (Marsch; para [75]). Further, it would have been obvius to one of ordinary skill in the art before the effective filing date to have modified the paraffin discharge unit to comprise the cooling unit as taught by Marsch, because Marsch teaches that the container is cooled in order to solidify which indicates that the sample complete and processed (Marsch; para [77]).
Thus, modified Ulbrich teaches the control unit changes the position and orientation of the cassette holder gripper to horizontally place the cassette holder held vertically, controls the head and the first conveying unit to place the cassette holder on the placement portion (Ulbrich; para [56]; The tissue infiltration device 1 has a storage unit 9, in which transport devices 4 can be intermediately stored in the tissue infiltration device 1 under predeterminable conditions), and controls the paraffin discharge unit and the second conveying unit to move the placement portion in the horizontal direction and dispose the placement portion below the nozzle to discharge paraffin from the nozzle in a state in which the cassette holder is disposed below the nozzle, and moves the placement portion from below the nozzle in the horizontal direction to place the cassette holder on the flat surface portion (Marsch; Fig. 3; para [19]; a dispensing apparatus having a control unit which dispenses a new liquid into the container).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Ulbrich in view of Lihl in view of Marsch, and in further view of Leighton et al (WO 1999044063 A2; hereinafter “Leighton”; already of record).
Regarding claim 6, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 5.
Modified Ulbrich does not teach the paraffin-embedded block preparation device comprising a vibration table that is capable of translational motion at least in the horizontal direction and is provided below the nozzle in the vertical direction, wherein the control unit controls the second conveying unit, the paraffin discharge unit, and the vibration table to place the cassette holder placed on the placement portion on the vibration table and vibrate the vibration table while discharging paraffin from the nozzle.
However, Leighton teaches an analogous art of an array-based technology (Leighton; Abstract) comprising a vibration table that is capable of translational motion at least in the horizontal direction (Leighton; Fig. 14; page 14, para 3; a stage having a x-drive 102). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the paraffin-embedded block prepration device to comprise the vibration table as taught by Leighton, because Leighton teaches that the table moves the tissue sample in position for preparation (Leighton; page 14, para 6).
Thus modified Ulbrich teaches the vibration table is provided below the nozzle in the vertical direction (Leighton; Fig. 14; Marsch; para [75]; In a fourth working phase, control is then applied to fourth dispensing vessel 10 d, which is filled with liquid wax (paraffin)) wherein the control unit controls the second conveying unit, the paraffin discharge unit, and the vibration table to place the cassette holder placed on the placement portion on the vibration table and vibrate the vibration table while discharging paraffin from the nozzle (Ulbrich; Fig. 1; para [58]; On the rail 18, a transport arm 19 is movably guided; Marsch; Fig. 3; para [19]; a dispensing apparatus having a control unit which dispenses a new liquid into the container).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ulbrich in view of Lihl, and in further view of Minuti et al (US 20190033179 A1; hereinafter “Minuti”; already of record).
Regarding claim 7, modified Ulbrich teaches the paraffin-embedded block preparation device according to claim 1, wherein
the chemical liquid bottle includes a bottle body a cross-sectional shape of which along a plane orthogonal to a center axis is polygonal (Ulbrich; para [58]; the liquid container 11 has four partial containers 11 a).
Modified Ulbrich does not teach a lid covering an opening portion of the bottle body, the head includes a lid gripper configured to grip the lid and rotatably provided, the chemical liquid bottle holding portion includes a plate-shaped portion in which a plurality of holes having a shape corresponding to an outer shape of the chemical liquid bottle are formed, the plate-shaped portion extends along the horizontal direction, the bottle body is inserted into the holes, the bottle body and the lid are screwed together, and the control unit controls the lid gripper to rotate the lid gripper in a state in which the lid gripper grips the lid to remove the lid from the bottle body.
However, Minuti teaches an analogous art of a tissue processor (Minuti; Abstract) comprising a chemical liquid bottle includes a bottle body a cross-sectional shape of which along a plane orthogonal to a center axis is polygonal (Minuti; para [48]; plurality of (independent) containers) a lid covering an opening portion of the bottle body (Minuti; para [69]; each of the containers may comprise a lid 16, 17 for sealingly closing the respective container), the head includes a lid gripper configured to grip the lid and rotatably provided (Minuti; para [53]; The robotic arm 9 may further comprise a handling means 10 for handling and gripping, in particular for holding and releasing, a tissue carrier), the chemical liquid bottle holding portion includes a plate-shaped portion in which a plurality of holes having a shape corresponding to an outer shape of the chemical liquid bottle are formed, the plate-shaped portion extends along the horizontal direction, the bottle body is inserted into the holes (Minuti; Fig. 1; para [50]; a housing 8 for housing at least the containers, preferably in a lower part of the housing 8; the examiner notes that the containers are fixed to the housing which comprises the plate-shaped portion in which a plurality of holes having a shape corresponding to an outer shape of the chemical liquid bottle because the containers fit within the housing), the bottle body and the lid are screwed together , and the control unit controls the lid gripper to rotate the lid gripper in a state in which the lid gripper grips the lid to remove the lid from the bottle body (Minuti; para [29]; Each of the containers may comprise a lid (or a cover) for sealingly closing the respective container, the lid being designed such that the robotic arm can access the container via the lid for placing a tissue carrier in the container). It would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the paraffin-embedded block preparation device of modified Ulbrich to comprise the lid as taught by Minuti, because Minuti teaches the lid avoids fumes and reagents from evaporating (Minuti; para [29]).
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: Ulbrich in view of Minuti fails to disclose “a tentative lid placement portion on which a tentative lid is placed, wherein the control unit places the lid removed from the bottle body on the lid placement portion and covers the bottle body from which the lid is removed with the tentative lid placed on the tentative lid placement portion”. Modified Ulbrich teaches a lid placement portion on which the lid is placed (Minuti; para [29]; the containers may comprise a lid (or a cover) for sealingly closing the respective container). However, the lid as taught by Minuti is not removable and has an access/opening for the cassettes. Further, modified Ulbrich does not teach an alternate/tentative lid to be temporarily used.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicants’ arguments filed, 5/28/2026, have been considered and the arguments are not found to be persuasive. The non-persuasive arguments are addressed below.
In the Applicants’ arguments, on page 8, the Applicant amends claim 1 to overcome the previous 112(b) rejection of claim 1. However, the Applicant amended limitation “the first paraffin-filled bottle holding portion and the second paraffin-filled bottle holding portion” in lines 21-22 which raise a 112(b) rejection as stated above.
In the Applicants’ arguments, on pages 9-10, the Applicant argues that Ulbrich fails to teach “the cassette holder being an independent unit configured to individually and detachably contain the single cassette”. The Examiner respectfully disagrees. First, the limitation is drawn to an element that is not positively recited. The “cassette holder” is a functional limitation and/or intendedly use by the holding portion. Thus, it is deemed that the claimed holding portion is not differentiated from the holding portion of Ulbrich (see MPEP §2114). Further, the Applicant claims Ulbrich teaches a sector piece that carries multiple cassette racks. However, a user may load the sector with only a single cassette and therefore the limitation is met.
In the Applicants’ arguments, on page 10, the Applicant argues that Ulbrich fails to disclose “having a gripper portion formed at an upper end thereof to be directed gripped by the cassette holder gripper”. The Examiner respectfully disagrees. First, Ulbrich teaches that the sector piece 23 has a coupling element 33, with which the sector piece 23 can be gripped by the coupling element 20 of the transport apparatus 6 (Ulbrich; para [23]) which is interpreted as the “gripper portion”. Additionally, the limitations are directed to an element that is not positively recited. The “cassette holder” is a functional limitation of the holding portion as discussed above. Thus, the limitations directed to the cassette holder such as “having a gripped portion formed at an upper end thereof to be directly gripped by the cassette holder gripper” is not required.
In the Applicants’ arguments, on pages 10-11, the Applicant argues that Ulbrich fails to disclose “such that the cassette holder is suspended and moved vertically”. The Examiner respectfully disagrees. Ulbrich teaches a robot arm could have a gripping or hooking element, which can be moved via an arm construction with a housing part of the tissue infiltration device in vertical and/or horizontal direction (Ulbrich; para [43]). Specifically, the cassette holder is held and moved by the robot arm in a vertical direction. The limitation is directed to the orientation of the cassette holder which would have surfaces that extend vertically as the Applicant claims.
In the Applicants’ arguments, on page 11, the Applicant argues that Ulbrich fails to disclose “the first paraffin filled bottle…configured to receive only the first cassette holder” and the second paraffin-filled bottle…configured to receive only the second cassette holder”. The Examiner respectfully disagrees. The Examiner notes that Ulbrich is modified to teach processing cassette holders individually. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The Examiner relies on Lilh to teach the second paraffin-filled bottle configured to hold the second cassette holder.
In the Applicants’ arguments, on page 12, the Applicant argues that Ulbrich and Lihl teach multiple cassettes. However, the limitations are directed to intended use and/or functional language of the holding portion. The claim does not positively recite that the “single cassette” is processed. Therefore, a user may load the holders with only “one” cassette as multiple cassettes are not required.
In the Applicant’s arguments, on pp 13-14, the arguments regarding the dependent claims merely refer back to the teachings of the references not meeting independent claim 1. However, the arguments regarding claim 1 are addressed above which was modified to address the claim amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin Q Le whose telephone number is (571)272-7556. The examiner can normally be reached Monday - Friday 9am - 5pm.
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/A.Q.L./Examiner, Art Unit 1796
/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
