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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Claim limitation “retaining mechanism” in claims 14, 28, and 112 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “mechanism” coupled with functional language “retain a substrate” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “mechanism” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 14, 28, 112 has/have been interpreted to cover “a clamp” corresponding to structure described in the specification that achieves the claimed function, and equivalents thereof (Spec., para. [0170]).
Claim limitation “adjustment mechanism” in claims 14, 23, 26, 27, 33, 105, 106, and 107 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “mechanism” coupled with functional language “configured to move the second member along an axis orthogonal to the second plane” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “mechanism” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 14, 23, 26, 27, 33, 105-107 has/have been interpreted to cover “a linear actuator” corresponding to structure described in the specification that achieves the claimed function, and equivalents thereof (Spec., para. [0166]).
Claim limitation “alignment mechanism” in claims 14, 19, 20, 23, 26, and 27 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “mechanism” coupled with functional language “configured to optically align the first region with the second region” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “mechanism” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 14, 19, 20, 23, 26, and 27 has/have been interpreted to cover “a motor” corresponding to structure described in the specification that achieves the claimed function, and equivalents thereof (Spec., para. [0222]).
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Remarks
This Office Action fully acknowledges applicant’s remarks filed 07/15/2026. Claims 14, 15, 17, 19-28, 30, 32, 33, and 102-112 are pending. Claim 14 has been amended. New claims 109-112 have been added.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
1. Claims 14, 15, 17, 19-28, 33, 106, 107, 109 and 112 are rejected under 35 USC 103 as being unpatentable over International Patent Application Publication No. WO2020047004 to Schnall-Levin et al. (cited by applicant) in view of U.S. Patent Application Publication No. 2018/0080876 to Rockel et al. (cited by applicant) and U.S. Patent Application Publication No. 2012/0046203 to Walsh et al.
Schnall-Levin et al. teaches a sample handling apparatus that includes a first holder 2704 that holds a first substrate 2706 on which a sample 2708 is positioned, a second holder 2710 that holds a second substrate 2712 with an array of features 2714 and reagents (reagents are delivered before any interaction between the sample and the array of features takes place, (p. 239, lines 26-30), an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane prior to translating second substrate 2712 in the z-direction so that sample 2708 contacts, or nearly contacts, feature array 2714; and an adjustment mechanism configured to translate the second substrate 2712 in any of the x-, y-, and z-coordinate directions.
To facilitate movement and alignment of the second substrate, second holder 2710 - under the control of control unit 2728 - can translate second substrate 2712 in any of the x-, y-, and z-coordinate directions. In some embodiments, apparatus 2700 can optionally include an alignment sub-system 2730, which can be electrically connected to control unit 2728. Alignment sub-system 2730 functions to ensure that sample 2708 and feature array 2714 are aligned in the x-y plane prior to translating second substate 2712 in the z-direction. (page 240, lines 3-13) The control unit and alignment sub-system read on applicant’s claimed adjustment mechanism.
Schnall-Levin et al. teaches that the sample handling apparatus further includes a control unit 2728 having an electronic processor 2780, a memory unit 2782, a storage device 2784, and an input/output interface 2786. Processor 2780 is capable of processing instructions stored in memory unit 2782 or in storage device 2784, and to display information on input/output interface 2786 (Fig. 27C, p. 243, lines 16-30)
Schnall-Levin et al. teaches that a variety of different imaging elements can be used in detection sub-system 2764, including CCD detectors and other image capture devices to generate one or more images of sample 2708 or feature array 2714 by detecting light from the sample or feature array. (page 242, lines 22-25)
Schnall-Levin et al. does not teach a shuttle to which the image capture device is mounted, wherein the shuttle is configured to move the image capture device.
Rockel et al. teaches an automated analysis system for biological samples, that as shown in Fig. 3 include optical systems 30 and 40 that may be moved relative to the samples. [0044]
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levin et al. to provide for the image capturing device to move as taught by Rockel et al to adjust alignment with the sample or feature assay.
As shown in Fig. 27B, Schnall-Levin et al. teaches optics 2760 that are used to focus light onto image detection system 2764; however, Schnall-Levin et al. does not teach a focusing motor coupled to the image capture device, wherein the focus motor comprises one or more actuators configured to actuate the image capture device towards or away from the sample to adjust a focus of an image formed on the image capture device.
Walsh et al. teaches an imaging analyzer for imaging areas on glass slides. [0048].
Walsh et al. teaches that focus adjustments using a camera can be accomplished by moving the camera with respect to detection areas. [0259]
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levin et al. in view of Rockel et al. to move the image capture device towards or away from the sample as taught by Walsh et al. for purposes of focusing the image taken by the image capture device. Moving the image capturing device by a motor coupled to the image capturing device would have been an obvious means to automate the focusing.
I.) Regarding applicant’s claim 14, as noted above Schnall-Levin et al. in view of Rockel et al. and Walsh et al. teach all the limitations of claim 14.
Therefore, Schnall-Levin et al. in view of Rockel et al. and Walsh et al. render claim 14 obvious.
II.) Regarding applicant’s claim 15, as noted above Schnall-Levine et al. in view Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 15 depends.
Claim 15 recites that the image capture device is positioned inferior to below the second member.
Schnall-Levine et al. teaches that the light is received by light delivery optics 2756 and directed onto sample 2708 or feature array 2714, either of which is positioned on a mount 2758. (page 242, lines 11-130
As shown in Fig. 27B of Schnall-Levine et al. the elements of the image capture system are located below the mount 2758.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 15 obvious.
III.) Regarding applicant’s claim 17, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 17 depends.
Claim 17 recites first member is further configured to retain a third substrate disposed in the first plane, the third substrate comprising a second sample disposed in a third region of the third substrate.
Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that the first member is further configured to retain a third substrate disposed in the first plane, the third substrate comprising a second sample disposed in a third region of the third substrate.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to modify the first member to retain a third substrate disposed in the first plane, the third substrate comprising a second sample disposed in a third region of the third substrate. Note, duplication of parts has no patentable significance unless a new and unexpected result is produced. (MPEP 2144.04(VI)(B))
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 17 obvious.
IV.) Regarding applicant’s claim 19, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 17 obvious from which claim 19 depends.
Claim 18 recites that the alignment mechanism is further configured to optically align the third region with a fourth region of the second substrate along the first plane and/or the second plane such that the second sample contacts at least a portion of the reagent medium when the third region and the fourth region are aligned and when the third substrate and the second substrate are separated by the threshold distance.
As noted above, Schnall-Levine et al. teaches an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane.
Also as noted above, it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to modify the first member to retain a third substrate disposed in the first plane, the third substrate comprising a second sample disposed in a third region of the third substrate.
It would have further been obvious to one of ordinary skill in the art before applicant’s effective filing date to optically align the third region with a fourth region of the second substrate along the first plane and/or the second plane such that the second sample contacts at least a portion of the reagent medium when the third region and the fourth region are aligned and when the third substrate and the second substrate are separated by the threshold distance, for purposes of imaging the samples and feature arrays.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 19 obvious.
V.) Regarding applicant’s claim 20, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 19 obvious from which claim 20 depends.
Claim 20 recites that the alignment mechanism is further configured to optically align, responsive to optically aligning the first region with the second region, the third region with the fourth region along the first plane and/or the second plane.
As noted above, Schnall-Levine et al. teaches an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane.
It would have further been obvious to one of ordinary skill in the art before applicant’s effective filing date to optically aligning the first region with the second region, the third region with the fourth region along the first plane and/or the second plane for purposes of imaging the samples and feature arrays.
Therefore, Schnall-Levine et al. in view of Rockel et al. Walsh et al. renders claim 20 obvious.
VI.) Regarding applicant’s claim 21, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 19 obvious from which claim 21 depends.
Claim 21 recites that the alignment mechanism comprises a sensor configure to determine a threshold alignment of the first region with the second region and a threshold alignment of the third region with the fourth region.
Applicant discloses that the “The computing device can be further communicatively coupled image capture device 2120, such as a microscope, a camera, an optical sensor, an imaging device, or the like configured to acquire and provide an image of the sample to the computing device.” [0252] Applicant’s sensor is an image capture device.
Therefore, the CCD taught by Schnall-Levine et al. reads on the “sensor” recited in claim 21.
As noted above, Schnall-Levine et al. teaches an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane. Therefore, the CCD (or other image capturing device taught by Schnall-Levine et al.) is “configured” to determine a threshold alignment of the first region with the second region and a threshold alignment of the third region with the fourth region.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 21 obvious.
VII.) Regarding applicant’s claim 22, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 19 obvious from which claim 22 depends.
Claim 22 recites that the image capture device is further configured to capture, responsive to the alignment of the third region with the fourth region and during a time when the second sample is in contact with at least a portion of the reagent medium, an image of the third region and the fourth region.
As noted above, Schnall-Levine et al. teaches an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view Rockel et al. and Walsh et al. to use the imaging unit to capture, responsive to the alignment of the third region with the fourth region and during a time when the second sample is in contact with at least a portion of the reagent medium, an image of the third region and the fourth region.
Therefore Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 22 obvious.
VIII.) Regarding applicant’s claim 23, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 23 depends.
Claim 23 recites a computing device configured to control the alignment mechanism, the adjustment mechanism, and/or the image capture device.
As noted above, Schnall-Levine et al. teaches an electronic processor 2780 which is interpreted as being a computing device that controls the alignment mechanism and/or the imaging capturing device of Schnall-Levine et al.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 23 obvious.
IX.) Regarding applicant’s claim 24, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 23 obvious from which claim 24 depends.
Claim 24 recite that the computing device is configured to communicate with a user interface, the user interface configured to display information about the sample holder.
As noted above, Schnall-Levine et al. teaches a control unit 2728 having an electronic processor 2780, a memory unit 2782, a storage device 2784, and an input/output interface 2786.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 24 obvious.
X.) Regarding applicant’s claim 25, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 24 obvious from which claim 25 depends.
Claim 25 recites that the computing device is configured to receive a user input from the user interface.
As noted above, Schnall-Levine et al. teaches a control unit 2728 having an electronic processor 2780, a memory unit 2782, a storage device 2784, and an input/output interface 2786.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 25 obvious.
XI.) Regarding applicant’s claim 26, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 25 obvious from which claim 26 depends.
Claim 26 recites that the computing device is configured to control the alignment mechanism, the adjustment mechanism, and/or the image capture device responsive to the user input.
As noted above, Schnall-Levine et al. teaches a control unit 2728 having an electronic processor 2780, a memory unit 2782, a storage device 2784, and an input/output interface 2786. The input/output interface would at least allow a user to turn on and off the adjustment mechanism and/or image capturing device or overall system.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 26 obvious.
XII.) Regarding applicant’s claim 27, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 26 obvious from which claim 27 depends.
Claim 27 recite that the computing device is further configured to control, based on the sensor, the alignment mechanism, the adjustment mechanism, and/or the image capture device.
As noted above, the CCD or other image capturing device taught by Schnall-Levine et al. reads on applicant’s disclosed sensor. Further as noted above, Schnall-Levine et al. teaches an electronic processor and an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 27 obvious.
XIII.) Regarding applicant’s claim 28, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 28 depends.
Claim 28 recites that the first retaining mechanism is configured to retain the first substrate in a fixed position with respect to the first plane.
As noted above, Schnall-Levine et al. teaches a first holder 2704 holds a first substrate 2706 and an adjustment mechanism configured to translate the second substrate 2712 in any of the x-, y-, and z-coordinate directions, thus teaching that the first substrate is retained in a fixed position with respect to the first plane.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 28 obvious.
XIV.) Regarding applicant’s claim 33, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 33 depends.
Claim 33 recites that the adjustment mechanism is configured to move the second member toward the first member.
As noted above, Schnall-Levine et al. teaches that the adjustment mechanism configured to translate the second substrate 2712 in any of the x-, y-, and z-coordinate directions.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 33 obvious.
XV.) Regarding applicant’s claim 106, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 106 depends.
Claim 106 recites that the adjustment mechanism is configured to move the second member toward the first member such that the first substrate contacts at least a portion of the reagent medium.
As noted above, Schnall-Levine et al. teaches that the adjustment mechanism is configured to move the second member toward the first member.
The recitation that the first substrate contacts at least a portion of the reagent medium does not incorporate a structural limitation into the sample holder of claim 14.
Nevertheless. it is noted that when a sufficient amount of the reagent is present, the first substrate will contact at least a portion of the reagent medium.
Therefore, Schnall-Levine in view of Rockel et al. and Walsh et al. renders claim 106 obvious.
XVI.) Regarding applicant’s claim 107, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 107 depends.
Claim 107 recites that the adjustment mechanism is configured to move the second member toward the first member such that the first substrate contacting the at least a portion of the reagent medium urges the reagent medium in an opposite direction such that the reagent medium is displaced over the second substrate and/or the first substrate as the second member moves toward the first member and the second substrate and the first substrate become substantially parallel.
As noted above, Schnall-Levine et al. teaches that the adjustment mechanism is configured to move the second member toward the first member.
The recitation that at least a portion of the reagent medium urges the reagent medium in an opposite direction such that the reagent medium is displaced over the second substrate and/or the first substrate as the second member moves toward the first member and the second substrate and the first substrate become substantially parallel does not incorporate any structural limitations into the sample holder of claim 14.
Nevertheless, it is noted that when a sufficient amount of the reagent is present, the reagent medium will be displaced over the second substrate and/or the first substrate as the second member moves toward the first member and the second substrate and the first substrate become substantially parallel does not incorporate any structural limitations into the sample holder
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 107 obvious.
XVII.) Regarding applicant’s claim 109, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 107 depends.
Claim 109 recites that the one or more actuators is configured to actuate the image capture device towards or away from the sample along a linear axis.
In Schnall-Levine et al. in view of Rockel et al. and Walsh et al. the actuators of Walsh et al. would move the image capture device towards or away from the sample along a linear axis.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 109 obvious.
XVIII.) Regarding applicant’s claim 112, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 107 depends.
Claim 112 recites that the first retaining mechanism is configured to retain the first substrate such that the sample is fixed as the one or more actuators actuate the image capture device towards or away from the sample.
In Schnall-Levine et al. in view of Rockel et al. and Walsh et al. it would have been obvious to one of ordinary skill in the art to retain the first substrate such that the sample is fixed as the one or more actuators actuate the image capture device towards or away from the sample, for purposes of taking a stationary image.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 112 obvious.
2. Claim 108 is rejected under 35 USC 103 as being unpatentable in view of Schnall-Levine et al. in view of Rockel et al. and Walsh et al.
I.) Claim 108 recites a system comprising:
the sample holder of claim 14; and
a computing device communicatively coupled to the image capture device and to the sample holder, the computing device comprising a display, a data processor, and a non-transitory computer readable storage medium storing computer readable and executable instructions, which when executed cause the data processor to adjust a location of the first substrate relative to the second substrate to cause all or the portion of the first region to be aligned with the second region.
As noted above, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders that sample holder of claim 1 obvious.
Further as noted above, Schnall-Levine et al. teaches that the sample handling apparatus further includes a control unit 2728 having an electronic processor 2780, a memory unit 2782, a storage device 2784, and an input/output interface 2786. Processor 2780 is capable of processing instructions stored in memory unit 2782 or in storage device 2784, and to display information on input/output interface 2786 (Fig. 27C, p. 243, lines 16-30).
Schnall-Levine et al.’s control unit, electronic processor, memory unit, storage device, and input/output interface reads on or renders obvious computing device comprising a display, a data processor, and a non-transitory computer readable storage medium storing computer readable and executable instructions.
As also noted above, Schnall-Levine et al. teaches an alignment subsystem 2730 including an imaging unit, which can be electrically connected to a control unit 2728, and which functions to ensure that sample 2708 and feature array 2714 are optically aligned in the x-y plane prior to translating second substrate 2712 in the z-direction so that sample 2708 contacts, or nearly contacts, feature array 2714; and an adjustment mechanism configured to translate the second substrate 2712 in any of the x-, y-, and z-coordinate directions. Adjusting the position of the first substrate as opposed to the second substrate would have been an obvious modification to achieve the same result of aligning the substrates in a desired alignment.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 108 obvious.
3. Claims 30 and 32 are rejected under 35 USC 103 as being unpatentable over Schnall-Levine et al. in view of Rockel et al. and Walsh et al.as applied to claim 14 above and further in view of U.S. Patent No. 7,220,573 to Shea et al. (cited by applicant).
I.) Regarding applicant’s claim 30, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 30 depends.
Claim 30 recites that the second member further comprises a base configured to couple to a bottom surface of the second substrate and retain the second substrate on the second member.
Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that the second member further comprises a base configured to couple to a bottom surface of the second substrate and retain the second substrate on the second member.
Shea et al. teaches the use of a base 1 for supporting a substrate as shown in Fig. 4. (column 12, lines 25-41)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to use a base to support the second substrate as taught by Shea et al. as a simple substitution of one known element for another to obtain predictable results. (MEPE 2143 (I)(B))
Therefore, Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Shea et al. renders claim 30 obvious.
II.) Regarding applicant’s claim 32, as noted above Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Shea et al. renders claim 30 obvious from which claim 32 depends.
Claim 32 recites that the first member is configured to dispose the first substrate along the first plane such that the first substrate is parallel with a surface on which the base is located.
As shown in Fig. 27A of Schnall-Levine et al. the first member is configured to dispose the first substrate along the first plane such that the first substrate is parallel with a surface of second substrate that would be on the base incorporated from Shea et al. above.
Therefore, Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Shea et al. renders claim 32 obvious.
4. Claims 102, 103 and 105 are rejected under 35 USC 103 as being un patentable over Schnall-Levine et al. in view of Rockel et al. and Walsh et al. as applied to claim 14 and further in view of U.S. Patent Application Publication No. 2016/0003718 to Ikushima et al.
I.) Regarding applicant’s claim 102, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 102 depends.
Claim 102 recites that the second member further comprises a spring mechanism configured to couple to at least a portion of a bottom surface of the second substrate.
Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that the second member further comprises a spring mechanism configured to couple to at least a portion of a bottom surface of the second substrate.
Ikushima et al. teaches the use of springs 64 that support a slide 16 on a palette 57, which springs contract under pressure. (Fig. 6; [0081])
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to provide the second holder (member) with a spring mechanism configured to couple to at least a portion of a bottom surface of the second substrate as taught by Ikushima et al. to absorb pressure when the second substrate contacts the first substrate.
Therefore, Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Ikushima et al. renders claim 102 obvious.
II.) Regarding applicant’s claim 103, as noted above Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Ikushima et al. renders claim 102 obvious from which claim 103 depends.
Claim 103 recites that second member further comprises a base configured to couple to the bottom surface of the second substrate and retain the second substrate on the second member, wherein the spring mechanism extends in a superior direction from the base.
Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that second member further comprises a base configured to couple to the bottom surface of the second substrate and retain the second substrate on the second member, wherein the spring mechanism extends in a superior direction from the base.
As noted above, Ikushima et al. teaches the use of springs 64 that support a slide 16 on a palette 57, which springs contract under pressure.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to provide the second holder (member) with a base for additional support and a spring mechanism configured to couple to at least a portion of a bottom surface of the second substrate as taught by Ikushima et al. to absorb pressure when the second substrate contacts the first substrate.
As shown in Fig. 6 of Ikushima et al. the spring mechanism extends upward.
Therefore, Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Ikushima et al. renders claim 102 obvious.
III.) Regarding applicant’s claim 105, as noted above Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Ikushima et al. renders claim 103 obvious from which claim 103 depends.
Claim 105 recites that the adjustment mechanism configured to move the second member toward the first member such that the spring mechanism compresses so that the first substrate, the second substrate, and the base are substantially parallel.
As shown in Fig. 27A of Schnall-Levine et al. the first member is configured to dispose the first substrate along the first plane such that the first substrate is parallel with a surface of second substrate.
Therefore, Schnall-Levine et al. in view of Rockel et al., Walsh et al. and Ikushima et al. renders claim 105 obvious.
5. Claim 110 is rejected under 35 USC 103 as being unpatentable over Schnall-Levine et al. in view of Rockel et al. and Walsh et al. as applied to claim 14 above and further in view of U.S. Patent Application Publication No. 2022/0048033 to Zhang et al.
I.) Regarding applicant’s claim 110, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 110 depends.
Claim 110 recites that the one or more actuators comprises a cam configured to actuate the image capture device along the linear axis.
Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that the one or more actuators comprises a cam configured to actuate the image capture device along the linear axis.
Zhang et al. discloses an apparatus and methods for analysis and detection of DNA using convectional heating and a label-free microarray.
In Fig. 7b (center embodiment) Zhang et al. illustrates the use of a cam mechanism in which a stepper motor rotates the cam against a follower connected to a chip holder to raise and lower the chip holder.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. in view of Zhang et al. to include an actuator mechanism comprising a cam configured to actuate the image capture device along the linear axis.
Therefore, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. in view of Zhang et al renders claim 110 obvious.
6. Claim 111 is rejected under 35 USC 103 as being unpatentable over Schnall-Levine et al. in view of Rockel et al. and Walsh et al. as applied to claim 14 above and further in view of U.S. Patent Application Publication No. 2017/0243051 to Chukka et al.
I.) Regarding applicant’s claim 111, as noted above Schnall-Levine et al. in view of Rockel et al. and Walsh et al. renders claim 14 obvious from which claim 111 depends.
Claim 111 recites that the image capture device comprises a microscope, and the one or more actuators is configured to actuate the microscope towards or away from the sample along the linear axis.
While Schnall-Levine et al. in view of Rockel et al. and Walsh et al. provides for the image capture device to move towards or away from the sample along a linear axis, Schnall-Levine et al. in view of Rockel et al. and Walsh et al. does not teach that the image capture device comprises a microscope
Chukka et al. teaches image an analysis system and further teaches that image capture devices can include, without limitation, a camera (e.g., an analog camera, a digital camera, etc.), optics (e.g., one or more lenses, sensor focus lens groups, microscope objectives, etc.), imaging sensors (e.g., a charge-coupled device (CCD), a complimentary metal-oxide semiconductor (CMOS) image sensor, or the like), photographic film, or the like.
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify Schnall-Levine et al. in view of Rockel et al. and Walsh et al. to use any known image capturing device, including a microscope as taught by Chukka et al. as a simple substitution of one known element for another to obtain predictable results. (MPEP (I)).
Response to Arguments
Applicant’s arguments with respect to claims 14, 15, 17, 19-28, 30, 32, 33, and 102-112 have been considered but are moot because the new ground of rejection that relies upon
Walsh et al., Zhang et al. and Chukka et al. as necessitated by applicant’s amendments to the claims.
Allowable Subject Matter
Claim 104 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 prior art or record does not teach a spring mechanism as recited in claim 104 in combination with the sample holder of claim 14 wherein the spring member is configured to dispose the second substrate along a plane at an angle different than the base that is coupled to bottom of the second substrate as shown in Fig. 18A.
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.
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/M.S.G./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
