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 Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 11-12 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bixon et al. (US 2022/0184625 A1 - cited by Applicant), hereinafter Bixon.
The applied reference has a common Assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding Claim 1, Bixon teaches: A specimen holder (title) comprising:
a body elongated along a body longitudinal axis (figures 1-2; element 12, L), the body having a distal end (18) and a proximal end (20), the proximal end opposite the distal end with respect to the body longitudinal axis, the body having a maximum length measured from the proximal end to the distal end along a first direction that is parallel to the longitudinal axis (figures 1-2), the body including a distal portion (24) that includes the distal end and a proximal portion (25) that includes the proximal end, the distal portion including a surface that carries a specimen upon engagement of the body with the specimen (26; 14);
a cavity that extends into the proximal portion from an opening formed in the proximal end (66), the cavity terminating within the proximal portion, wherein at least a portion of the cavity is formed by an inner surface of the proximal portion (paragraph 0054-0058; 088-0089); and
at least one slot that extends from the proximal end in the first direction, the at least one slot extends from an outer surface of the proximal portion to the inner surface (figure 12 shows slot coupler 28 that implies a slot).
Regarding Claim 2, Bixon teaches: The specimen holder of claim 1 wherein the cavity includes a cavity maximum length measured in the first direction, the at least one slot includes a slot maximum length measured along the first direction, and the cavity maximum length is greater than the slot maximum length (figures 13-14).
Regarding Claim 3, Bixon teaches: The specimen holder of claim 2 wherein the at least one slot has a slot depth measured from the outer surface to the inner surface along a second direction that is perpendicular to the body longitudinal axis, the cavity includes a cavity depth measured in the second direction, and the cavity depth is greater than the slot depth (figures 12-13).
Regarding Claim 4, Bixon teaches: The specimen holder of claim 3 wherein the at least one slot extends from the outer surface to the inner surface along the second direction (figures 12-13).
Regarding Claim 5, Bixon teaches: The specimen holder of claim 1 wherein the at least one slot includes at least a first slot and a second slot (figures 12-13).
Regarding Claim 6, Bixon teaches: The specimen holder of claim 5 wherein the first slot is aligned with the second slot such that a straight line that perpendicularly intersects the body longitudinal axis also intersects both the first slot and the second slot (figures 12-13).
Regarding Claim 11, Bixon teaches: The specimen holder of claim 1 wherein the cavity is a proximal cavity, the distal portion includes a straw, the surface is an internal surface that forms a distal cavity of the straw, the distal cavity extends into the distal portion from an opening formed in the distal end (paragraph 0054).
Regarding Claim 12, Bixon teaches: The specimen holder of claim 11 wherein the proximal cavity includes a first maximum cross-sectional dimension measured in a direction perpendicular to the longitudinal body axis, the distal cavity includes a second maximum cross-sectional dimension measured in the direction perpendicular to the longitudinal body axis, and the first maximum cross-sectional dimension is greater than the second maximum cross-sectional dimension (figures 11-13).
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 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.
Claim 13-15 is/are rejected under 35 U.S.C. 103 as being obvious over Bixon.
The applied reference has a common Applicant with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Regarding Claim 13, Bixon teaches: The specimen holder of claim 1, further comprising a wireless transponder (paragraph 0070-0072) but does not explicitly mention the wireless transponder positioned within the cavity. It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the invention to include wireless transponder positioned within the cavity as it has been held that rearrangement of parts it merely a matter of obvious design choice (MPEP 2144.04 VI.C).
Regarding Claim 14, Bixon teaches: The specimen holder of claim 13 but does not mention wherein the wireless transponder is held within the cavity by a friction fit. Bixon does teach many components can be friction fitted (paragraph 0075; 0083). It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the invention to include wherein the wireless transponder is held within the cavity by a friction fit as the substitution of one fitment method for another would have yielded predictable results to one of ordinary skill.
Regarding Claim 15, Bixon teaches: The specimen holder of claim 1 but does not mention wherein the body is a monolithic, one-piece member. It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the invention wherein the body is a monolithic, one-piece member as it has been held that “that the use of a one piece construction instead of the structure disclosed in [the prior art] would be merely a matter of obvious engineering choice.” (MPEP 2144.04 V.B).
Allowable Subject Matter
Claim 7 (8-10 by dependency) 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 following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record (Bixon) fails to teach a cavity that can expand and contract, as claimed. None of the prior art considered, alone or in combination, teaches that particular feature combined with the other limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY B SHAH whose telephone number is (571)272-0686. The examiner can normally be reached M-F 8-5.
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JAY SHAH
Primary Examiner
Art Unit 3791
/JAY B SHAH/Primary Examiner, Art Unit 3791
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