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 05/31/2023
The present office action is made in response to the Pre-amendment of 05/31/2023. It is noted that in the pre-amendment, applicant has made changes to the claims. There is not any change being made to the abstract, the drawings and the specification.
Regarding the claims, applicant has amended claims 1, 3, 7-9, 11-13, 16, 18, 20, 22, 26, 29, 32 and 34 and canceled claims 2, 4, 6, 14-15, 17, 19, 21, 23-25, 30 and 33. There is not any claim being added into the application. Thus, as amended, the pending claims are claims 1, 3, 5, 7-13, 16, 18, 20, 22, 26-29, 31-32 and 34-35.
Election/Restrictions
In response to the Election/Restriction mailed applicant ton 12/08/2025, applicant has made an election of Species (I) in the reply filed on 01/09/2026. 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)).
As a result of applicant’s election, claims 1, 3, 7-13, 16, 18, 20, 22, 26-29 and 31-32 are examined in the present office action, and claims 5 and 34-35 have been withdrawn from further consideration as being directed to a non-elected Species. It is noted that there is not any generic claim(s) being provided in the claims.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 15/123,370, filed on 09/02/2016.
Drawings
The drawings contain seventeen sheets of figures 1-17 were received on 04/28/2023. These drawings are objected by the examiner for the following reason(s).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the reference of “100”, see figs. 15A-15B, which is not mentioned in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The lengthy specification 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.
Claim Objections
Claims 1, 3, 7-10, 16, 18, 20, 22, 26-29 and 31-32 are objected to because of the following informalities. Appropriate correction is required.
a) Claim 1 is objected to because the use of both terms “the” and “said” to refer to an element/component previously recited in the claim(s) is not consistent. In particular, while applicant uses the term of “said” to refer to a body, see the claim on line 2; however, applicant also uses the term of “the” to refer to that body, see the claim on line 3. The similar problems of inconsistent use of both terms “the” and “said” are applied to the “second surface”, the “aperture”, … It is suggested that applicant needs to use only one term, i.e., --the-- or --said-- to refer to an element/component previously recited in a claim or in its base claim to maintain a consistence in claimed language being used throughout all claims.
b) The remaining claims are dependent upon the objected base claim and thus inherit the deficiencies thereof.
Claim Rejections - 35 USC § 112
11. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
12. Claims 20, 22 and 26-28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for the following reasons.
a) Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claim is rejected because the disclosure does not support for the step of inverting the coverslip as recited in the claim by the features thereof “inverting the coverslip … the objective lens” (lines 4-7).
Applicant is respectfully invited to review the specification, in particular, in paragraph [91] and shown in fig. 8, which discloses a slide having a body defined an aperture and a coverslip covering the aperture wherein the whole/entire microscope slide is inverted and then placed on a stage of a microscope so that the issue sample located on a surface of the coverslip is viewed through the coverslip. The disclosure does not support for the step of inverting only the coverslip as recited in the claim in the mentioned features. (examiner’s emphasis)
b) The remaining claims are dependent upon the rejected base claim and thus inherit the deficiency thereof..
13. 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.
14. Claims 3, 8, 11, 16 and 18 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.
a) Claim 3 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 specimen … cytospin sample” (lines 1-3). The mentioned feature makes the claim indefinite due to the use of term thereof “preferably” on line 2. Applicant should note that the mentioned term renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
b) Claim 8 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 sealant … solvent-based thermoplastic” (lines 1-2). The mentioned feature makes the claim indefinite due to the use of phase thereof “such as” on line 2. Applicant should note that the mentioned term renders the claim indefinite because it is unclear whether the limitations following the phase are part of the claimed invention. See MPEP § 2173.05(d).
c) Claim 11 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 black component … Sudan Black B” (lines 1-2). The mentioned feature makes the claim indefinite due to the use of term thereof “optionally” on line 2. Applicant should note that the mentioned term renders the claim indefinite because it is unclear whether the limitations following the term are part of the claimed invention. See MPEP § 2173.05(d).
d) 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 sample of tissue” (line 5) lacks a proper antecedent basis. Further, it is unclear the relationship(s) between the so-called “the sample of tissue” recited in the claim and the specimen recited in its base claim 1 on line 6.
e) The remaining claim(s) is/are dependent upon the rejected base claim and thus inherit(s) the deficiencies thereof.
Claim Rejections - 35 USC § 102
15. 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.
16. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
17. Claims 1, 3, 13, 16, 18, 20, 22 and 29, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aerojet-General Corporation (GB reference No. 1 235 587, submitted by applicant, hereafter, GB ‘587).
The GB ‘587 discloses a microscope slide for use with a microscope.
a) Regarding present claim 1, the microscope slide (10) as described in columns 3-6 and shown in figs. 1-6 comprises the following features:
a1) a substantially flat elongated body (12) having a flat upper surface (16) and a flat lower surface (14) wherein the body (12) defined an aperture (20) through the body, see columns 4-5 and figs. 1-2; and
a2) a transparent coverslip (26) is mounted on the flat lower surface (14) of the body (12) to cover the aperture (20) wherein the coverslip (26) comprises an upper surface (30) adjacent to the aperture (20) for supporting a biological sample (60) which is located within the aperture, see columns 5-6 and fig. 6.
b) Regarding present claim 3, the biological sample placed on the upper surface (30) of the coverslip which sample is observed by an operator via the microscope in a biological or medical diagnostic test can be a tissue slice.
c) Regarding present claims 13, 18 and 22, the coverslip (26) has a thickness in a range of 0.15 to 0.20 mm, see column 5 which is inside the range of (0.05 mm, 0.25 mm) as claimed.
e) Regarding present claim 16, as described in columns 5-6 and shown in figs. 5-6, the microscope slice (10) is placed on the microscope having a stage (44) and an objective lens (46) wherein the microscope slide is positioned in a manner which the lower surface (28) of the coverslip (26) facing to the objective lens (46) and the upper surface (30) supporting the sample (60) of the coverslip (26) facing away the objective lens.
f) Regarding present claim 29, the system as provided by the GB ‘587 comprises a microscope having a stage (44) supporting a microscope side (10) wherein a sealant, i.e., an immersion fluid (64) is used between the lower surface (28) of the coverslip (26) and the sample (60) and an adhesive is sued to secure the coverslip (26) to the lower surface (14) of the body (12), see column 5 and figs. 2 and 6.
g) Regarding present claim 20, the method steps are implicitly met by the structural limitations of the microscope slide.
18. Claims 1, 3, 7-8, 12-13, 16, 18, 20, 22, 26 and 29, as best as understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eastman et al (US Patent No. 6,411,434, submitted by applicant).
Eastman et al discloses a microscope slide for use with a microscope.
a) Regarding present claim 1, the microscope slide (10) as described in columns 6-8 and 10-11 and shown in figs. 1-4, 6 and 14 comprises the following features:
a1) a substantially flat elongated body (12) having a flat upper surface (12b) and a flat lower surface (12a) wherein the body (12) defined an aperture (18) through the body, see column 6 and fig. 4; and
a2) a transparent coverslip (16) is mounted on the flat lower surface (12a) of the body (12) to cover the aperture (18) wherein the coverslip (16) comprises an upper surface (16b) adjacent to the aperture (18) for supporting a biological sample (13) which is located within the aperture, see columns 5-6 and figs. 4 and 6.
b) Regarding present claims 3 and 12, the biological sample placed on the upper surface (16b) of the coverslip which sample is observed by an operator via the microscope in a biological or medical diagnostic test wherein the sample can be a tissue slice, and the microscope used to observe the biological sample can be an epifluorescent microscope. Applicant should note that there is not any specific feature/structure of the so-called “an epifluorescent” microscope being provided in the claim 12.
c) Regarding present claims 7-8 and 26, a transparent membrane (26) made by plastic and a fluid located inside the aperture (18) acts as a sealant within the aperture (18) to seal the biological sample (13) adjacent to the upper surface (16b) of the coverslip.
d) Regarding present claims 13, 18 and 22, the coverslip (16) has a thickness of 0.15 mm, see column 6 which is inside the range of (0.05 mm, 0.25 mm) as claimed.
e) Regarding present claim 16, as described in columns 5-6 and shown in fig. 14, the microscope slice (10) is placed on the microscope having a stage (72) and an objective lens (64) wherein the microscope slide is positioned in a manner which the lower surface (16a) of the coverslip (16) facing to the objective lens (64) and the upper surface (16b) supporting the sample (13) of the coverslip (16) facing away the objective lens.
f) Regarding present claim 29, the system as provided by Eastman et al comprises a microscope having a stage (72) supporting a microscope side (10), a sealant, i.e., a combination of the membrane (26) and the fluid withing the cavity (27) of the aperture (18) and an adhesive is used to secure the coverslip (16) to the lower surface (12a) of the body (12), see columns 7-8.
g) Regarding present claim 20, the method steps are implicitly met by the structural limitations of the microscope slide.
Claim Rejections - 35 USC § 103
19. 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.
20. Claims 7-11, 26-28, and 31-32, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Aerojet-General Corporation (GB reference No. 1 235 587, submitted by applicant, hereafter, GB ‘587) in view of Lorincz (US Patent No. 6,239,906) and Lohse (US Publication No. 2013/0337441)
The microscope slide having a body defined an aperture and a coverslip attached to the lower surface of the body covering the aperture and supporting a biological sample within the aperture as provided by the GB ‘587 meets all features recited in present claims 7-8 and 26 except the feature of a sealant within the aperture to seal the ample adjacent or in contact with the surface supporting the sample.
However, the use of a sealant for sealing a sample adjacent or in contact to a surface of a slide or a coverslip is known to one skill in the art as can be seen in the slide supporting a biological sample provided by Lorincz. In particular, in column 3 and shown in fig. 2, Lorincz discloses a microscope slide (11) having a viewing area (12) for supporting a biological sample (13) to be used in an epi-fluorescent microscope, and teaches the use of a sealant having supravital dyes for staining the sample in the viewing area for sealing the sample adjacent or in contact with the surface of the slide. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to modify the microscope slide having a coverslip with a surface supporting a biological sample provided by the GB ‘587 by using a sealant with dyes as suggested by Lorincz for sealing the sample adjacent to or in contact with the surface of the coverslip to hold the sample in a stable manner during any movement of the coverslip.
Regarding to the features that the sealant comprises opaque black sealant such as Sudan Black B as recited in claims 9-11, 27-28 and 31-32, such features is known to one skill in the art as can be seen in the sealant provided by Lohse, see Lohse in paragraphs [0385] and [[0427]-[0428]. Thus, it would have been obvious to one skill in the art before the effective filing date of the invention to use an opaque black sealant such as Sudan Black B as suggested by Lohse to obtain image with better image quality.
Conclusion
21. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
22. The US Publication No. 2002/0076807 is cited as of interest in that it discloses a microscope slide having a body (31) defied an aperture and a coverslip (33) attached to the lower surface of the body.
23. 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
