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 Pre-amendment of 04/03/2023 and the Amendment of 02/02/2026
The present office action is made in response to the Pre-amendment of 04/03/2023 and the amendment of 02/02/2026.
In the Pre-amendment, applicant has made changes to the specification and the claims. There is not any change being made to the abstract and the drawings.
3A) Regarding the specification, applicant has added a new paragraph regarding “Cross-reference to related application” into page 1 of the specification, see Note1 below; and
3B) Regarding the claims, applicant has amended claims 3-4 and 6-14. There is not any claim being added/canceled into/from the application. The pending claims are claims 1-14 which claims are subjected to the following restriction.
Note1
The amendment to the specification as provided in the pre-amendment of 04/03/2023 fails to comply with the Rule of 37 CFR 1.121 because applicant has underlined the paragraph newly-added to the specification.
In the amendment of 02/02/2026, applicant has made changes to the specification. There is not any change being made to the abstract, the drawings and the specification.
4A) Regarding the specification, applicant has added a new paragraph regarding “Cross-reference to related application” into page 1 of the specification.
5 Both the Pre-amendment of 04/03/2023 and the amendment of 02/02/2026 have been entered and the following conclusions are made:
5A) Regarding the specification, the amendment(s) to the specification as provided in the amendment of 02/02/2026 has been entered. The amendment(s) to the specification as filed on 04/03/2023 has NOT been entered; and
5B) Regarding the claims, the amendments to the claims as provided in the pre-amendment of 04/03/2023 have been entered.
Election/Restrictions
6. In response to the Election/Restriction mailed to applicant on 12/17/2025, applicant has made an election of Invention III in the reply filed on 02/16/2026. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
7. As a result of applicant’s election, claims 1 and 9-14 are examined in the present office action and claims 2-8 have been withdrawn from further consideration as being directed to non-elected Inventions. Applicant should note that the non-elected claim 2-8 will be rejoined if the linking claim 1 is later found as an allowable claim.
Priority
8. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
9. The listing of references in the specification, see page 1 of the specification, is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
10. The drawings contains nine sheets of figures 1A-1C, 2A-2B, 3A-3B, 4, 5A-5B, 6A-6B and 7A-7B were received on 04/03/2023. These drawings are approved by the examiner.
Specification
11. The lengthy specification which was amended by the amendment of 02/02/2026 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
12. The abstract of the disclosure is objected to because it longs more than 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
13. Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
14. 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.
15. 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 Interpretation
16. 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.
17. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
18. 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.
Such claim limitation is “a transparent imaging portion for microscopy” as recited in claim 1.
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.
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.
Claim Objections
19. Claims 1 and 9-14 are objected to because of the following informalities.
a) In claim 1: each of the phrases thereof “a shape of .. the second member (20)” (lines 14-16) and “a liquid-tight seal … the first and second member (10, 20)” (lines 27-29) has a grammatical error. Should --a shape of-- be inserted before “the inward facing side” on line 15, and “member” appeared on line 29 be changed to --members-- ? Appropriate correction is required.
b) In claim 14:: each of the phrases thereof “the wall portions (12, 22) of the first and the second member (10, 20)” (lines 10-11) and “the first and second movable shape support member” (line 13) has a grammatical error. Should the term “member” in each mentioned phrases be changed to --members--?
c) The remaining claims are dependent upon the objected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 112
20. 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.
21. Claims 9, 11-12 and 14 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 9 is 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:
a1) each of the features thereof “the second opening” (lines 5-6) and “the unassembled state” (lines 7-8) lacks a proper antecedent basis; and
a2) the claim is indefinite by the feature thereof “the membrane (30) adopts … the membrane (30)” (lines 9-12) make the claim indefinite due to the use of term “when” in the mentioned feature. Applicant should note that the term “when” renders the claim indefinite because it is unclear whether the limitation(s) following the term is/are part of the claimed invention. See MPEP § 2173.05(d).
b) Claim 11 is 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:
b1) each of the features thereof “the integrally formed second members (20, 20’)” (line 3) and “the first members “10, 10’) (line 8) lacks a proper antecedent basis. Applicant should note that the plurality of the first and second members each is recited in claim 10 (see claim 10 on lines 3 and 4, for example), not claim 9.
b2) the similar reason as set forth in element a2) above.
c) Claim 12 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 membrane (30) … the non-even portion (31)” (lines 2-4). The mentioned feature makes the claim indefinite due to the use of term “particularly” in the mentioned feature. Applicant should note that the term “particular(ly)” renders the claim indefinite because it is unclear whether the limitation(s) following the term is/are part of the claimed invention. See MPEP § 2173.05(d).
d) Claim 14 is 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:
d1) each of the features thereof “the second opening” (lines 5-6), “the second openings” (line 6) and “the first and second movable shape support member (41, 42)” (line 13) lacks a proper antecedent basis;
d2) what “the first and second movable shape support member (41, 42)” does applicant imply here? What is/are structural relationship(s) among the first and second movable shape support member (41, 42) with respect to the first member (10), the second member (20) and the transparent membrane (30)? and
d3) the similar reason as set forth in element c) above.
Claim Rejections - 35 USC § 103
22. 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.
23. 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.
24. Claims 1, 10 and 12-14, as best as understood, are rejected 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) (both submitted by applicant).
Foote discloses a display mount.
a) Regarding present claims 1 and 13, the display mount as provided in columns 2-4 and shown I figs. 1-2 is directed to a specimen holder for mounting/holding specimen(s) to be viewed in an optical microscope wherein the specimen holder comprises the following features:
a1) a first member (11-14) having a first opening on a first side of the first member and a circumferential wall portion (13) laterally enclosing a first volume comprising the first opening wherein the circumferential wall portion (13) has an inward facing side that faces toward the first volume and an outward facing side opposite the inward facing side, see column 2 and figs. 1-2;
a2) a second member (4-8) having a first opening on a first side of the second member and a circumferential wall portion (8) laterally enclosing a second volume wherein the circumferential wall portion (8) has an inward facing side that faces toward the second volume, see column 2 and figs. 1-2;
a3) the shape of the outward facing side of the wall portion (13) of the first member (11-14) is complementary to the shape of the inward facing side of the wall potion (8) of the second member (4-8) such that the wall portion (13) of the first member is able to be inserted in the second volume such that the first volume is at least partially comprises by the second volume;
a4) a flexible/pliable sheet (10) having a first side for supporting a specimen (19);
a4) in an assembled state, see column 2 and fig. 2, the pliable sheet (10) extends between the outward facing side of the wall portion (13) of the first member, the inward facing side of the wall portion (8) of the second member and covers the first opening defined by the first member thereby forming a liquid-tight seal between the wall portions (13, 8) of the first and second members and a transparent imaging portion (4) of a microscope at the first opening of the first member.
The only feature missing from the specimen holder provided by Foote is that Foote does not positively disclose that the flexible/pliable sheet (10) is a transparent sheet.
However, the use of a transparent sheet supporting a specimen in a microscope is known to one skill in the art as can be seen in the specimen holder of a microscope provided by Banes. In particular, Banes discloses a microscope having a specimen holder and teaches that the flexible sheet (200) used to support specimens is a transparent sheet, see column 5 on lines 27-30 and fig. 6, for example. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify eh specimen holder having a flexible/pliable sheet supporting a specimen as provided by Foote by using a transparent flexible/pliable sheet fort supporting specimen(s) as suggested by Banes for the purpose of supporting specimen(s) to meet a particular application.
b) Regarding present claim 10, the an arrangement of a plurality of specimen holders in an array is suggested by Banes as can be seen in columns 5-6 and shown in fig. 1A.
c) Regarding present claim 12, the pliable sheet (10) is a flexible and is deformable such that the sheet maintains a shape of non-even portion, see column 2 and fig. 2.
d) Regarding present claim 14, the method steps are implicitly met by the structure limitations of the combined product provided by Foote and Banes.
Allowable Subject Matter
25. Claims 9 and 11 are 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.
It is noted that the claims needs to rewrite/amend to overcome the rejections of the 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.
26. The following is a statement of reasons for the indication of allowable subject matter:
The sample holder having a pusher element as recited in the dependent claim 9 wherein the pusher element is used in sample holder having a first member, a second member and a transparent sheet supporting a sample with the features thereof “a first member … Member (10)” recited in its base claim 1 on lines 3-30 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 pushed element and its operation with respect to the transparent sheet supporting the sample and the volumes defined by the first and second members as recited in the features thereof “the sample holder … the membrane (30)” (claim 9 on linesn2-12). Such a structure of the pusher element in the sample holder with the mentioned features is not disclosed in the prior art.
Conclusion
27. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
28. The US Patent Nos. 4,912,037; 4,974,952 and 6,731,385 are cited as of interest in that each discloses a holder having a first member defined a first volume, a second member defined a second volume wherein the first member is insertable inside the second member due to the complementary in shapes of the inward facing wall(s) and outward facing wall(s) of the first and second members. However, each mentioned references does not disclose a transparent sheet for supporting a sample with its arrangement as recited in the independent claim 1 of the present US application.
29. 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.
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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