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 .
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.
Claim Objections
Claims 2-13 are objected to because of the following informalities:
Claim 2: “A removable lid as in claim 1” should recite the instant invention as introduced in claim 1, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 1, …”. Also suggest amending the remainder of the claim to recite “wherein said removable lid comprises a built-in circular large platform edge holder” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 3: “Two removable large platforms as in claim 1” should recite the instant invention as introduced in claim 1, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 2, …”. Also suggest amending the remainder of the claim to recite “wherein said two removable large platforms comprise the six built-in small circular coverslips platforms with cross cut channels” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 4: “Six built-in small circular coverslips platforms as in claim 1” should recite the instant invention as introduced in claim 1, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 3, …”. Also suggest amending the remainder of the claim to recite “where[[-]]in said six built-in small circular coverslips platforms comprise elevated circular coverslip perimeter edge holders” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 5: “Eight posts as in claim 1” should recite the instant invention as introduced in claim 1, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 4, …”. Also suggest amending the remainder of the claim to recite “wherein said eight posts each comprise one coverslip edge holder each” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 6: “Chamber base as in claim 1” should recite the instant invention as introduced in claim 1, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 5, …”. Also suggest amending the remainder of the claim to recite “wherein said chamber base comprises the two built-in circular large
Claim 7: “ Chamber base as in claim 1” should recite the instant invention as introduced in claim 6, such as “The coverslips moisture chamber and immunostaining processing workstation of claim 6, …” for consistency with the rest of the claims.
Claim 8: Recommend amending claim 8 to recite “A method of coverslips fixed specimen pre-incubation immunostaining on 12mm small circular coverslips using the coverslips moisture chamber and immunostaining processing workstation as in claim [[1]] 7, comprising: coverslips forceps handling; secured insertion and placement of coverslips onto the six built-in small circular platforms; two removable large platforms onto the removable lid built-in circular large platform edge holder; pipette immunostaining of coverslips; filling the two built-in water reservoirs on the chamber base; two removable large platforms into the two built-in large circular platform holders on the chamber base; covering the chamber base with the removable lid[[,]]; and placing the coverslips moisture chamber and immunostaining processing workstation into [[the]] a required storage facility for incubation” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 9. Recommend amending claim 9 to recite “A method of coverslips fixed specimen pre-incubation immunostaining on larger circular or square coverslips greater than 12mm using the coverslips moisture chamber and immunostaining processing workstation as in claim [[1]] 7, comprising: eight posts’ coverslips edge holders; two removable large platforms onto the removable lid built-in circular large platform edge holder[[,]]; pipette immunostaining of coverslips[[,]]; filling the two built-in water reservoirs on the chamber base[[,]]; two removable large platforms into the two built-in large circular platform holders on the chamber base[[,]]; cover the chamber base with the removable lid[[,]]; and place the coverslips moisture chamber and immunostaining processing workstation into [[the]] a required storage facility for incubation” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 10. Recommend amending claim 10 to recite “A method of coverslips fixed specimens repetitive immunostaining, washing and dumping cycles of 12mm small circular coverslips using the coverslips moisture chamber and immunostaining processing workstation as in claim [[1]] 7, comprising: coverslips forceps handling[[,]]; secured insertion and placement of coverslips onto the six built-in small circular platforms; two removable large platforms onto the removable lid built-in circular large platform edge holder; repetitive pipette immunostaining; and repetitive washing and repetitive dumping coverslips as required by varied immunostaining protocols” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 11. Recommend amending claim 10 to recite “A method of coverslips fixed specimens repetitive immunostaining, washing and dumping cycles of larger circular or square coverslips greater than 12mm using the coverslips moisture chamber and immunostaining processing workstation as in claim [[1]] 7, comprising: forceps secured insertion of coverslips placement into the eight posts’ coverslips edge holders; two removable large platforms onto the removable lid built-in circular large platform edge holder; pipette immunostaining of coverslips; filling the two built-in water reservoirs on the chamber base; placement of the two removable large platforms into the two built-in circular large base with the removable lid[[,]]; and place the coverslips moisture chamber and immunostaining processing workstation into [[the]] a required storage facility for incubation” for proper grammar, consistency and antecedent basis (see 112(b) rejections below) with the rest of the claims.
Claim 12. Recommend amending claim 12 to recite “[[A]] The method of of claim 10, further comprising two removable large platforms; and wicking wash fluid away from the secured small 12 mm circular coverslips edges.
Claim 13. Recommend amending claim 13 to recite “[[A]] The method of of claim 11, further comprising two removable large platforms; and wicking wash fluid away from the secured small 12 mm circular coverslips edges.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 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.
The terms “large platforms”; “large … platform holders”; and “large … platform edge holder” in claims 1-3, 6, and 8-13 and “small … platforms” in claims 1, 3-4, 8, and 10 include relative terms which renders the claim indefinite. The terms “large” and “small” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For the purposes of examination, “large” will be interpreted as anything larger than the “six built-in small circular coverslips platforms” and “small” with be interpreted as anything smaller than the “two removable large platforms” and “two built-in circular large platform holders” as recited in instant, independent claim 1.
Claims 5 and 7 are rejected for being dependent upon rejected claim 1.
Note: there are several antecedent basis issues noted in claims 8-11, therefore recommend amending the claim dependency as outlined above under claim objections.
Claims 8-11 recite “hand removal and placement of the large platforms; sequential hand placement of the removable large platforms onto the removable lid circular large platform edge holder”, however it is unclear where the large platforms are being removed from or placed in the first part of the claim and “hand placement” in the second part of the claim is unclear and seems unnecessarily limiting. Furthermore, it raises issues of if the hand itself is being claimed. Therefore recommend amending the claim dependency as outlined above under claim objections.
Claim 9 recites the limitation “co handling”, however it is unclear what is being co handled. Recommend removing this limitation.
Claims 12-13 recite the limitation “hand removing and hand tilting”, the “hand” limitation appears unnecessarily limiting. Furthermore, it raises issues of if the hand itself is being claimed. Therefore recommend removing both iterations of “hand” in the claims.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over International Publication WO 2013/172796 to Jerman.
Regarding claim 1, Jerman discloses a coverslip processor and method for performing manual high throughput cytochemical staining of cells grown on glass coverslips (i.e., coverslips moisture chamber and immunostaining processing workstation) (pg. 7, 8th paragraph) comprising: a base seal 3 (i.e., chamber base) having a top slider 2 (i.e., removable lid); greater than two raised portions 12 (i.e., large platforms) that are removable from rack 1 and the removable lid 2; greater than two large platform holders (see portion of rack 1 configured to accommodate the platforms 12 in Fig. 7, 9, and 10); eight built-in semicircular coverslips platforms formed in the distal portion of the body of rack 1 with elevated edges having recesses 7 that cut across rack 1 transversely and thus per Merriam Webster reads on the definition of cross cut channels; compartments 6 that read on built-in water reservoirs as they are configured to retain moisture and reduce evaporation of water; and at least eight posts (see areas of rack 1 between compartments 6 configured to hold the coverslips (see pg. 7, last paragraph -pg. 9, 3rd paragraph; Figs. 1-12).
Jerman fails to disclose “circular large platform holders”, however, MPEP 2144.04 IV. Changes in Shape states that configuration of a particular claim element is considered a matter of choice which one of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed element was significant. Therefore, it would have been obvious to one of ordinary skill in the art to change the shape of the large platform holders to circular or any shape desired for the benefit of holding coverslips of various shapes and sizes.
Regarding claim 4, Jerman renders obvious the invention of claim 1, and thus renders obvious the six built-in circular small circular coverslips platforms. As shown in Fig. 9 of Jerman the coverslips platforms have elevated sides that hold the perimeter of the coverslips and thus Jerman reads on the limitation “elevated circular coverslip perimeter edge holders” as recited in the instant claim.
Note: Jerman fails to disclose or render obvious dependent claims 2-3 or 5-13.
Claims 1 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over United States Patent 5,635,396 to Fedun.
Regarding claim 1, Fedun discloses a coverslips moisture chamber and immunostaining processing workstation comprising a multi-well plate 64 (i.e., chamber base); at least two removable coverslip holders 10 (i.e., two large removable platforms); at least two bottom surfaces 60 (i.e., two built-in circular large platform holders); at least four lower portions 12 (i.e., built-in small circular coverslips platforms) with annulus 38 (i.e., elevated edges) having an areas 45 cut across (i.e., cross cut channels) the built-in circular coverslips platforms; wells 62 (i.e., built-in water reservoirs); and at least eight upper portions 22 (i.e., posts) having protuberance 24 and opening 28 (i.e., coverslip holders) (see Col. 3, lines 13-23; Col. 5, 1st paragraph; Figs. 1 & 7). Note: Merriam Webster defines an area cut transversely along something thus area 45 of Fedun reads on the claim limitation.
Fedun fails to disclose six built-in circular coverslips platforms, however MPEP 2144.04 VI. B. Duplication of Parts states that a plurality of a claim element is a mere duplication of parts without patentable significance unless a new of unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill art before the effective filing date for there to be six built-in circular coverslips platforms for the benefit of processing more coverslips in the same device.
Fedun fails to disclose “a removable lid” as recited in the instant claim.
Jerman discloses a coverslip processor and method for performing manual high throughput cytochemical staining of cells grown on glass coverslips comprising a top slider 2 (i.e., removable lid) that is connectable to a rack 1 and base 3 (see Figs. 1-12).
Jerman and Fedun are analogous in the field of coverslips processing. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the device of Fedun to include a removable lid for the benefit of ensuring a watertight seal and avoid external exposure (see pg. 8, 1st paragraph).
Regarding claim 3, the combination of the references above render obvious the invention of claim 1. Fedun discloses wherein the large platforms 10 comprise the built-in coverslip platforms 12 with cross cut channels 45 (see Figs. 1 and 7).
Regarding claim 4, the combination of the references above render obvious the invention of claim 1. Fedun discloses wherein the built-in coverslip platforms 12 comprise elevated circular coverslip perimeter edge holders 24/ 28 (see Figs. 1 and 7).
Regarding claim 5, the combination of the references above render obvious the invention of claim 1. Fedun discloses wherein the posts 22 each comprise one coverslip edge holder 24/28 each (see Figs. 1 and 7).
Regarding claim 6, the combination of the references above render obvious the invention of claim 1. Fedun discloses wherein the chamber base 64 comprises the large circular platform holders 60 (see Figs. 1 and 7).
Regarding claim 7, the combination of the references above render obvious the invention of claim 1. Fedun discloses wherein the chamber base 64 comprises the water reservoirs 62 (see Figs. 1 and 7).
Note: Fedun and Jerman, alone or together, fail to teach nor fairly suggest claims 2 and 8-13.
Novelty
Claims 2 and 8-13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Fedun and Jerman, alone or in combination, fail to teach nor fairly suggest “where said lid comprising a built-in circular large platform edge holder” as recited in instant claim 2. Jerman discloses a removable lid that is flat without any type of structure that could reasonable be interpreted as a holder and therefore fails to read on the claim limitation.
Fedun discloses a method that comprises coverslip handling with forceps 32 (see Fig. 2); secured insertion and placement of coverslips onto the circular platforms 12 (see Fig. 2); adding a suitable medium to the vessel; and removal of the coverslips for further study (see Col. 6, 1st paragraph). Fedun discloses coverslips generally are produced as circles with diameters about 12 mm, 18mm. 22 mm and 25 mm; as squares with 18 mm. 22 mm and 25 mm sides and as rectangles with sides ranging from 11 mm by 22 mm to 48 mm by 60 mm (see Col. 3, lines 55-65).
Jerman discloses a method comprising: inserting a plurality of coverslips onto the modified circular platforms; washing rack 1 with wash fluid without lid 2 and chamber base 3 attached; introducing fixing solution into rack 1 with chamber base 3 attached ; washing rack 1 with washing fluid without lid 2 and chamber base 3 attached; introducing blocking solution into rack 1 with chamber base 3 attached; introducing a solution primary antibody to rack 1with chamber base 3 attached; incubating rack 1 with both lid 2 and chamber base 3 attached; washing rack 1 with washing fluid without lid 2 and chamber base 3 attached; adding a fluorescence conjugated secondary antibody to rack 1 with chamber base 3 attached; incubating rack 1 with both lid 2 and chamber base 3 attached; washing rack 1 with washing fluid without lid 2 and chamber base 3 attached; and removing coverslips with tweezers and placed on microscope slide (see pg. 10, 4th paragraph – pg. 11, last paragraph; Figs. 1-12). Jerman discloses wherein compartments 6 are configured to receive a pipette for adding liquids or reagents (see pg. 8, last paragraph; Fig. 8).
However, Fedun and Jerman, alone or in combination, fail to teach nor fairly suggest “placement of the removable large platforms onto the removable lid circular large platform edge holder” as recite in instant claims 8-11.
As novelty has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHRYN E LIMBAUGH whose telephone number is (571)272-0787. The examiner can normally be reached Monday-Thursday 7:00-5:00.
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/KATHRYN ELIZABETH LIMBAUGH/Primary Examiner, Art Unit 1797