DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to the Amendment
The present office action is made in response to the amendment of 07/05/2026. It is noted that in the amendment of 07/05/2026, applicant has made changes to the abstract, the specification and the claims. There is not any change being made to the drawings.
A) Regarding the abstract, applicant has submitted an amended abstract in a separated sheet;
B) Regarding the specification, applicant has submitted a substitute specification with its marked-up copy showing the changes to the specification; and
C) Regarding the claims, applicant has amended claims 1 and 11-13; canceled claims 2-9 and 14 and added a new set of claims, i.e., claims 15-17, into the application.
Response to Arguments
The amendments to the abstract, the specification and the claims as provided in the amendment of 07/05/2026 and applicant’s arguments provided in the mentioned amendment, pages 7-10, have been fully considered and resulted the following conclusion.
A) Regarding the claims, the following conclusions are made:
A1) because applicant has canceled claims 2-9 and 14 and added a new set of claims, i.e., claims 15-17, into the application. Thys, as a result, the pending claims are now claims 1, 10-13 and 15-17; and
A2) A review of the newly-added claims 15-17 has resulted that the scope of new claims is similar to that recited and examined claims 1 and 9-14, thus all pending claims 1, 10-13 and 15-17 are examined in the present office action.
B) Regarding the objections to the abstract and the specification set forth in the office action of 03/05/2026, the following conclusions are made:
B1) the amended abstract provided in a separated sheet filed by applicant in the amendment of 07/05/2026 has been approved and entered; and
B2) the substitute specification filed in the amendment of 07/05/2026 has not been entered because applicant has not submitted a statement that the substitute specification does not contain any new matter as recited by Rule 37 CFR 1.125(b).
As a result, the objections to the specification are repeated in the present office action.
C) Regarding the Claim Interpretation set forth in the office action of 03/05/2026, the amendment to the claims as provided in the amendment of 07/05/2026, and applicant’s arguments provided in the mentioned amendment, page 8, have been fully considered and are sufficient to overcome the Claim Interpretation set forth in the mentioned office action.
D) Regarding the objections of claims 1 and 9-14 set forth in the office action of 03/05/2026, the amendment to the claims as provided in the amendment of 07/05/2026, and applicant’s arguments provided in the mentioned amendment, pages 8-9, have been fully considered and are sufficient to overcome the objections of claims 1 and 9-14 set forth in the mentioned office action.
E) Regarding the rejections of claims 9, 11-12 and 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as set forth in the office action of 03/05/2026, the amendment to the claims as provided in the amendment of 07/05/2026, and applicant’s arguments provided in the mentioned amendment, page 9, have been fully considered and are sufficient to overcome the rejections of claims 9, 11-12 and 14 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the mentioned office action.
F) Regarding the rejection of claims 1, 10 and 12-14 under 35 U.S.C. 103 as being unpatentable over Foote (US Patent No. 1,002,910) in view of Banes (US Patent No. 6,048,723), set forth in the office action of 03/05/2026, the amendment to the claims as provided in the amendment of 07/05/2026, and applicant’s arguments provided in the mentioned amendment, pages 9-10, have been fully considered and are sufficient to overcome the rejection of claims 1, 10 and 12-14 under 35 U.S.C. 103 as being unpatentable over Foote (US Patent No. 1,002,910) in view of Banes (US Patent No. 6,048,723), set forth in the mentioned office action.
Specification
4. The specification is objected to because it does not have headlines such as Summary of the Invention, Brief Description of the Drawings, …, for the purpose of proving a clear framework of the specification. Appropriate correction is required.
5. The following guidelines illustrate the preferred layout for the specification of a utility application. These guidelines are suggested for the applicant’s use.
Arrangement of the Specification
As provided in 37 CFR 1.77(b), the specification of a utility application should include the following sections in order. Each of the lettered items should appear in upper case, without underlining or bold type, as a section heading. If no text follows the section heading, the phrase “Not Applicable” should follow the section heading:
(a) TITLE OF THE INVENTION.
(b) CROSS-REFERENCE TO RELATED APPLICATIONS.
(c) STATEMENT REGARDING FEDERALLY SPONSORED RESEARCH OR DEVELOPMENT.
(d) THE NAMES OF THE PARTIES TO A JOINT RESEARCH AGREEMENT.
(e) INCORPORATION-BY-REFERENCE OF MATERIAL SUBMITTED ON A READ-ONLY OPTICAL DISC, AS A TEXT FILE OR AN XML FILE VIA THE PATENT ELECTRONIC SYSTEM.
(f) STATEMENT REGARDING PRIOR DISCLOSURES BY THE INVENTOR OR A JOINT INVENTOR.
(g) BACKGROUND OF THE INVENTION.
(1) Field of the Invention.
(2) Description of Related Art including information disclosed under 37 CFR 1.97 and 1.98.
(h) BRIEF SUMMARY OF THE INVENTION.
(i) BRIEF DESCRIPTION OF THE SEVERAL VIEWS OF THE DRAWING(S).
(j) DETAILED DESCRIPTION OF THE INVENTION.
(k) CLAIM OR CLAIMS (commencing on a separate sheet).
(l) ABSTRACT OF THE DISCLOSURE (commencing on a separate sheet).
(m) SEQUENCE LISTING. (See MPEP § 2422.03 and 37 CFR 1.821 - 1.825). A “Sequence Listing” is required on paper if the application discloses a nucleotide or amino acid sequence as defined in 37 CFR 1.821(a) and if the required “Sequence Listing” is not submitted as an electronic document either on read-only optical disc or as a text file via the patent electronic system.
Claim Objections
6. Claim 17 is objected to because the use of claimed language is not consistent.
In particular, while the claim and other claims in the application use the term of “the” to refer to an element/component which is previously recited, see claim 17 on lines 1-2 for the feature of “the first opening”, “the first member”; however, the claim also uses the term “said” to refer to “a third side”, see the claim on line 3. Should “said third side” (line 3) be changed to --the third side-- to maintain a consistence in claimed language of the claim and throughout all pending claims?
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 15-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons:
a) Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the sample volume (VS)” (line 32) lacks a proper antecedent basis.
b) Claim 16 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite by the feature thereof “the exterior optical imaging surface … the sample holder assembly (1)” (lines 1-4).
The mentioned feature makes the claim indefinite because it is completely unclear from the claimed language what the so-called “structural components of the sample holder assembly” about. In other words, what are “structural components of the sample holder assembly”?
c) The remaining claim(s) is/are dependent upon the rejected base claim and thus inherit(s) the deficiencies thereof.
Allowable Subject Matter
9. Claims 1 and 10-13 are allowed.
10. Claims 15-17 would be allowable if rewritten/amended to overcome the rejections of those claims under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, set forth in the present office action.
11. The following is a statement of reasons for the indication of allowable subject matter:
a) The sample holder having a first member, a second member and a transparent membrane with structures and their structural relationships as recited in the independent claim with the features thereof “a first member … member (10, 20)” (claim 1 on lines 3-29) is allowable with respect to the prior arts, in particular, the US Patent Nos. 1,002,910 and 6,048,723 by the limitation regarding the structure of the pusher element and its operation with respect to the transparent membrane supporting the sample and the volumes defined by the first and second members as recited in the features thereof “the sample holder …a pre-shaped form” (claim 1 on lines 32-39). Such a structure of the pusher element in the sample holder with the mentioned features is not disclosed in the prior art.
b) The sample holder having a first member, a second member and a transparent membrane with structures and their structural relationships as recited in the independent claim with the features thereof “a first member … member (10, 20)” (Claim 15 on lines 3-29) is allowable with respect to the prior arts, in particular, the US Patent Nos. 1,002,910 and 6,048,723 by the limitation regarding the structure of the transparent membrane supporting the sample and its structural/operation with respect to the openings and volumes defined by the first and second members as recited in the features thereof “the transparent membrane … the membrane (30)” (claim 15 on lines 30-36). Such a structure of the pusher element in the sample holder with the mentioned features is not disclosed in the prior art.
Conclusion
12. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
13. 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.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571)272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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