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 .
Remarks
This office action fully acknowledges Applicant’s remarks and amendments submitted on 20 July 2026.
Claims 1-20 are pending.
No claims are withdrawn.
No claims are canceled.
No claims are newly added.
Claims 1-20 are amended.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 6, 8-9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McKenna et al. (US 2013/0252847 A1), hereinafter “McKenna”.
Regarding Claim 1, McKenna teaches a device 101 for pressing a QMAX-Card (the “holder” as in paras. [0071-0081] – Further note that Applicant’s additional construction of the QMAX card “comprising a first plate, a second plate, spacers, and a hinge joining the first plate and the second plate, wherein the first plate and the second plate are rotatable relative to each other around the hinge to form different configurations, including an open and a closed configuration” does not hold patentable weight as the QMAX card is merely an intended workpiece of the press device.), comprising:
a first arm 102 having a first end and a second end, wherein the first end comprises a pressing block having a contact area configured to contact the QMAX-Card (Fig. 13: the protruding surface of the lid part 101 including the compressor elements 127);
a second arm having a first end and a second end, wherein the first end comprises a card compartment that receives and orients the QMAX-Card (Fig. 13 and [0131]: “The holder comprises a recess 107 for receiving a second substrate 109...” – Therein, the portion having the recess 107 is the second arm, being connected to the first arm through a hinge.);
a pressor hinge joining the respective second ends of the first and second arms; (Fig. 13 shows the processing steps of the presser, wherein the final step is folding the first and second arms about a hinge to place said arms in a closed configuration surrounding the first and second substrates.);
at least one compressing spring for regulating a compression pressure applied by the pressing block ([0132]: “Spring-loaded compressor elements 127 are provided on the lid 102 of the holder 101...”);
and a stopper configured to limit the compression pressure (The upwardly protruding portion receiving the screw 103 as seen through Fig. 13 and/or the raised border portion surrounding the recess 107.),
wherein the first arm is rotatable around the pressor hinge toward the second arm from an open position to a close position, wherein in the open position, the pressing block is spaced apart from the card compartment to permit placement of the QMAX-Card on the card compartment, wherein in the closed position, the pressing block is at a position for contacting the QMAX-Card and pressing the QMAX-Card against the card compartment (See Fig. 13 and [0078-0081]: “The holder may be closable, in order to encase the first and second substrates. Accordingly, the holder may have an open configuration to allow the first substrate, second substrate and/or spacer components to be loaded into the holder, and a closed configuration in which the first substrate, second substrate and/or spacer components are held within the holder...The holder may comprise one or more compressor elements, for urging the first substrate towards the second substrate, and/or for urging the second substrate towards the first substrate, e.g. when the holder is in its closed configuration.”);
as in Claim 1.
Further as in Claim 1, regarding the “wherein the open configuration is a configuration in which the first and second plates are either partially or completely separated apart and the spacing between the first and second plates is not regulated by spacers, and the closed configuration is a configuration for compressing a sample between the first and second plates to form a layer of the sample between the first and second plate”, these statements are treated as statements of the intended workpiece (the recited particular QMAX-Card) or the intended use (for compressing a particular QMAX-Card) of the claimed apparatus rather than as limitations which impart patentable distinction to the “a device for pressing” apparatus itself.
Apparatus claims are examined based on what the apparatus is (its structure) rather than the particular article on which it is intended to act. "Apparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc. – MPEP 2114(II). The “QMAX-Card” of the present claims is not a positively claimed or required element of the claimed pressing apparatus, but is rather inferentially provided as a capability of said pressing apparatus given that the QMAX-Card is recited merely by way of a compartment intended to be used for a QMAX-Card: “a card compartment for accommodating a QMAX-Card”.
Functional language in an apparatus claim is satisfied when the prior art structure is capable of performing the recited function (MPEP 2111.02(II); MPEP 2114(II); In re Schreiber). As the prior art compressor of McKenna has commensurate structure with the claimed compressor (first arm, second arm, compartment, compressing spring, stopper), the prior art of McKenna meets the claim notwithstanding that said prior art of McKenna does not expressly say it is used with the recited particular QMAX-Card of the instant claim. McKenna similarly involves a flat, plate-based card being inserted into the compressor and compressed between opposing portions of the device, further demonstrating that the prior art structure is fully capable of use with Applicant’s recited QMAX-Card which is similarly a flat plate-based card.
Thus, the particular QMAX-Card described through Claim 1 is not given patentable weight herein as said QMAX-Card is drawn to a mere intended workpiece (structure intended to be worked upon by the claimed device for pressing) not positively structurally required by the claim; and because the prior art pressing structure is fully capable of use with the particularly recited QMAX-Card given its commensurately arranged structure and operation on similar flat card sample carriers.
Regarding Claim 2, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein a middle of the contact area contacts the second plate at a location no more than three-tenths of the length of the second plate measured from the card hinge toward the open end thereof (As discussed above regarding claim 1, the QMAX-Card and second plate thereof are not positively claimed elements of the present device, the QMAX-Card being drawn to a mere intended workpiece of the device having no particular patentable weight aside from intended use of the pressing device. The pressing device is fully capable of contacting an area of a card no more than three-tenths of the length of the second plate measured from the card hinge toward the open end thereof, depending on the positioning of a prospective card within McKenna.), as in Claim 2.
Regarding Claim 3, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the at least one compressing spring is pre-loaded (Fig. 13 and para. [0132] disclose the spring elements as being within the compressor elements 127, thus being pre-loaded into the device. No step is recited in McKenna requiring that a user load the springs.), as in Claim 3.
Regarding Claim 4, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the at least one compressing spring comprises two or more compression springs configured to distribute pressure across the pressing block (Fig. 13 shows the compressing block as having multiple compressor elements 127. As para. [0132] discusses each compressor element 127 as being spring-loaded, there are thereby six compression springs shown through Fig. 13, thereby satisfying the “two or more” claim requirement.),
as in Claim 4.
Regarding Claim 6, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the card compartment comprises a second contact area 111 that supports the QMAX-Card placed therein (See Fig. 13 showing the substrates 109/117 supported on the inwardly protruding shelf portion 111.), as in Claim 6.
Regarding Claim 8, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the pressing block contacts the QMAX-Card in the closed position (Similarly as above, the QMAX-Card is not a positively claimed element of the device and is thereby drawn to a mere intended workpiece not given particular weight aside from capabilities of the pressing device. As the pressing device of McKenna is structured an arranged commensurately as claimed, said device is fully capable of the QMAX-Card in the close position., as seen through the hinged clamping mechanism of Fig. 13 which closes to contact a card.), as in Claim 8.
Regarding Claim 9, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the card compartment comprises a cushion 111 for supporting and contacting the QMAX-Card (See Fig. 13 showing the substrates 109/117 supported on the inwardly protruding shelf/cushion portion 111.), as in Claim 9.
Regarding Claim 11, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the card compartment further comprises a sample-deposition mark positioned to indicate a sample-deposition location on the QMAX-Card and a test-area mark positioned to indicate an area to be covered by the sample (Fig. 13: The tips of the supports 111 over which a sample is added to the substrate 109 is the sample-deposition mark, and the test area mark is the shape of the receiving chamber. – See also MPEP2111.05(I)(B) wherein no functional relationship between the printed matter and the device are indicated as such printed matter is provided in relation to the QMAX-Card, thereby depending on operation of the device with the prospective workpiece not having patentable weight, and lacking sufficient clarity in the relationship between the sample-deposition location and the test-area mark and the QMAX-Card for which they appear to be relevant to.), as in Claim 11.
Regarding Claim 12, the prior art meets the limitations of Claim 1 as discussed above. Further, McKenna teaches the pressing device discussed above further comprising a height-adjustable structure configured to regulate an extent to which the first arm moves toward the second arm ([0075]: “One or more spacer components may be provided, as part of the holder, as part of the first substrate, as part of the second substrate or separately. The spacer components are used to provide a space between the first and second surfaces. The spacer components may have adjustable height, to allow adjustment of the gap between the first and second surfaces.”), as in Claim 12.
Regarding Claim 13, the prior art meets the limitations of Claim 12 as discussed above. Further, McKenna teaches the pressing device discussed above wherein the height-adjustable structure is disposed on the second arm, and comprises a screw mounted in a hole ([0075]: “For example, the spacer components may be screws, which can be raised or lowered to adjust the gap between the first and second surfaces.” – See further Fig. 13 and para. [0132] discussing the spacers (113 for example) as on the second arm.), as in Claim 13.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over McKenna in view of Elliot et al. (US 2006/0120921 A1), hereinafter “Elliot”. McKenna has been discussed above. McKenna has been discussed above.
Regarding Claim 5, McKenna does not specifically teach the pressing device discussed above wherein the pressing block is covered with a foam layer that defines the contact area, as in Claim 5.
However, Elliot teaches a device comprising a clamp 60 that holds a cover to a slide 1 (similarly as in the two substrates held together in McKenna) wherein the clamp comprises legs 62 situated around the periphery of the slide 1 and have spring-like properties to provide an even force around the periphery of the cover. Elliot further states other forms of legs or clamp are possible such as compressible foam or pneumatic clamps. ([0125])
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the pressing block is covered with a foam layer that defines the contact area, such as suggested by Elliot, so as to provide an even compression to the substrates sandwiching the sample as similarly contemplated by McKenna ([0140]).
Claims 7 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over McKenna in view of Ceremony et al. (US 2009/0269835 A1), hereinafter “Ceremony”. McKenna has been discussed above.
Regarding Claim 7, McKenna does not specifically teach the pressing device discussed above wherein the device further comprises a torsion spring configured to maintain the first arm in the open position to facilitate loading the QMAX-Card into the card compartment, as in Claim 7.
However, Ceremony teaches a respective device, a thermal cycler, having a first arm 103 and a second arm 102 for clamping onto and compressing a microwell plate between a thermal block 104 and a platform 110 (See Fig.1) wherein the first arm and second arm are biased into a normally-open position by a torsion spring assembly 103 to prevent inadvertent closing and mating of the arms to prevent error related thereto ([0023]: “The lid 103 is joined to the base 102 by a torsion spring hinge assembly 105...”).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the device further comprises a torsion spring configured to maintain the first arm in the open position to facilitate loading the QMAX-Card into the card compartment, such as suggested by Ceremony, so as to prevent inadvertent closing and mating of the arms to prevent error related thereto.
Regarding Claim 14, McKenna does not specifically teach the pressing device discussed above wherein the device further comprises a motor, a solenoid, a magnet, or a combination thereof for moving the first arm toward the second arm, as in Claim 14.
However, Ceremony teaches a respective device, a thermal cycler, having a first arm 103 and a second arm 102 for clamping onto and compressing a microwell plate between a thermal block 104 and a platform 110 (See Fig.1) wherein the first arm and second arm are actuated toward one another by a motor ([0046]: “the hinge motor 301 is actuated to move the lid to the ready-to-clamp position”), thereby allowing for automation of the process and providing greater consistency between runs therethrough.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the device further comprises a motor for moving the body of the first arm toward the body of the second arm, such as suggested by Ceremony, so as to provide automation over the closing process and allow for greater consistency between runs therethrough.
Regarding Claim 15, McKenna does not specifically teach the pressing device discussed above wherein the device further comprises a vibration absorption material to reduce vibration during the pressing of the QMAX-Card, as in Claim 15.
However, Ceremony teaches a respective device, a thermal cycler, having a first arm 103 and a second arm 102 for clamping onto and compressing a microwell plate between a thermal block 104 and a platform 110 (See Fig.1) wherein the device further comprises a vibration absorption material to reduce vibration (Fig. 8 and [0032]: “vibration isolators 177”).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the device further comprises a vibration absorption material to reduce vibration during the press, such as suggested by Ceremony, as unwanted vibrations are a well-known driver of errors in sample preparation and analysis as indicated by Ceremony.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over McKenna in view of Andrews et al. (EP 0902271 A2), hereinafter “Andrews”.
Regarding Claim 10, the prior art meets the limitations of Claim 9 as discussed above. Further, McKenna does not specifically teach the pressing device discussed above wherein the cushion comprises a foam that stabilizes the QMAX-Card in the card compartment and distributes pressure during compression of the QMAX-Card, as in Claim 10.
However, Andrews teaches a respective press system where a microwell array (sample holder) is compressed by a lid 216 including “a conformal coating 223, such as foam rubber or the like...This coating 223 helps to hold the tray assembly in position in the tray receiving portion 214, and also ensures that the lid 216 provides even or substantially even pressure against the cover 118...”. Therein, a person of ordinary skill in the art comparing sample holder pressing devices such as Andrews would have recognized the foam cushion/coating as helping hold the card of McKenna (or that of Chou) in place and immobilized, rather than being placed directly onto plastic offering less friction, as well as for ensuring even compression of the card, the coating of Andrews expressly showing the clamping device provides even pressure to a sample holder by way of the foam layer.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the cushion comprises a foam that stabilizes the QMAX-Card in the card compartment and distributes pressure during compression of the QMAX-Card, such as suggested by Andrews, so as to immobilize the QMAX-Card and ensure even compression, as similarly contemplated by McKenna discussing evenness of the layers as well as spring-loaded compressing elements ensuring uniform contact of the compressors ([0048, 0072, 0132]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over McKenna in view of Reynolds et al. (US PAT 5,921,676 A), hereinafter “Reynolds”. McKenna has been discussed above.
Regarding Claim 16, McKenna does not specifically teach the pressing device discussed above wherein the device further comprises a metal base and a rubber pad disposed underneath the metal base to prevent the device from moving during a pressing of the QMAX-Card, as in Claim 16.
However, Reynolds teaches a respective sample preparation device, a mixing device, wherein the base is made of metal (Reynolds Claim 6) so as to provide a rigid, resilient material. Further, Reynolds teaches a rubber pad being disposed underneath the metal base to prevent the device from moving ([col. 4, lines 22-23 “Also seen are rubber feet 65 which support base 11 and ensure strong resistance to sliding.”).
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the device of McKenna wherein the device further comprises a metal base and a rubber pad, the rubber pad is disposed underneath the metal base to prevent the device from moving during the pressing, such as suggested by Reynolds, so as to provide a sturdy, resilient material resistant to breaking, and to prevent sliding of the device during operation.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over McKenna in view of Chou et al. (WO 2019/027963 A1), hereinafter “Chou”. McKenna has been discussed above.
Regarding Claim 17, McKenna teaches a method of generating a substantially uniform sample layer, comprising:
providing the device of claim 1 with the first arm in the open position (See Claim 1 above and McKenna Fig. 13(2.).);
placing the QMAX-Card on the compartment (Fig. 13 shows the QMAX-Card 109/117 placed on the compartment 107.);
depositing a sample on the first plate at a location proximal to the card hinge when the second plate is in the open configuration relative to the first plate ([0033], [0084]: “the sample liquid may be dispensed directly onto the sample liquid wettable region, before the second surface is positioned opposed to the first surface” Therein, the card must be in an open configuration to allow the sample to be sandwiched, the separated plate configuration in McKenna being equivalent to the open configuration of Chou discussed below.);
and moving the first arm toward the closed position so that the pressing block contacts the second plate at the location no more than one-half of the length of the second plate measured from the card hinge toward the open end thereof (Fig. 13(3.) shows the compressor elements 127 as contacting the card less than one half of the shorter dimension length. When combined with the hinge of Chou discussed below, such placement satisfies the claim requirement of contact relative to the hinge. Further, the “open end thereof” is interpreted broadly as any end of the card, given that an “open end” does not impart particular structure defining exactly which dimension the measurement is to be made.) and progressively rotates the second plate from the open configuration toward the closed configuration relative to the first plate to compress the sample into a layer having a substantially uniform thickness regulated by the spacers (Fig. 13 and [0123-0124]: “After the sample is loaded, the array slide (second surface) is slowly and steadily lowered onto the spacers... The sample will then spread into the shape defined by the hydrophilic region, the hydrophobic barrier, and the array slide (second surface).” – The clamping then ensures the layer is uniformly pressed to a constant thickness.), as in Claim 17.
Further regarding Claim 17, McKenna does not specifically teach the QMAX-Card now required from Claim 1 as wherein the QMAX- Card comprises a first plate, a second plate, spacers, and a hinge joining the first plate and the second plate, wherein the first plate and the second plate are rotatable relative to each other around the hinge to form different configurations, including an open and a closed configuration, as required through the providing of the QMAX-Card step in the method claim.
However, Chou teaches a QMAX-Card having a hinge connecting the first and second plates (“the first plate and the second plate of the Q- card are connected by a hinge so as to provide the first plate and the second plate as rotatable relative to each other around the hinge to form different configurations, including an open and a closed configuration, which allows the two plates to pivot against each other.”) so as to provide the QMAX-Card as a single unit, thereby allowing for more ease of use by a user rather than handling two separate plates which require manual user alignment.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the method of McKenna wherein the provided QMAX-Card comprises a hinge joining the first and second plates, such as suggested by Chou, so as to allow for more ease of use by a user rather than handling two separate plates which require manual user alignment, and as a mere obvious alternative to the separate first and second plates of Mckenna. Further, the skilled artisan would find it obvious to integrate the spacers of McKenna in the QMAX-Card so as to maintain their function of providing a particular defined sample thickness between the plates.
Further, Chou teaches a QMAX-Card having spacers formed on the interior surfaces of their plates (“According to the present invention, in some embodiments for measuring the volume of one or several IE poor regions, a sample is sandwiched between two plates that make a sample with a uniform thickness, wherein the sample thickness is predetermined by spacers placed on the surface of one or both plates while the area of the area of the IE poor region is measured.”) so as to provide for a predetermined sample thickness and ensure uniform thickness.
Thus, one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to modify the method of McKenna wherein the provided QMAX-Card comprises spacers on the interior surfaces of the plates, such as suggested by Chou, so as to provide for a predetermined sample thickness and ensure uniform thickness.
Regarding Claim 18, the prior art meets the limitations of Claim 17 as discussed above. Further, McKenna teaches the method discussed above wherein moving the first arm is performed using a mechanical force ([0011]: “manual laboratory assaying” See also Fig. 13, as the holder 101 is actuated from an open to closed state, a mechanical force must be present. Further, the mechanical force of tightening the screw 103 further compresses the sample.), as in Claim 18.
Regarding Claim 19, the prior art meets the limitations of Claim 17 as discussed above. Further, McKenna/Chou teaches the method discussed above where, during the pressing, the pressing block of the device contacts the second plate of the QMAX-Card so that the second plate rotates about the card hinge toward the first plate ([0132]: “Spring-loaded compressor elements 127 are provided on the lid 102 of the holder 101 at positions corresponding to the spacers 113, to urge the first substrate 117 towards the second substrate 109.” – As the device of Claim 1 is commensurately structured as claimed, such pressing would commensurately contact a plate of the QMAX-Card of Chou to force the QMAX-Card into a closed configuration, the hinge governing such closing.), as in Claim 19.
Regarding Claim 20, the prior art meets the limitations of Claim 17 as discussed above. Further, McKenna/Chou teaches the method discussed above wherein the pressing block of the device contacts a section of the hinge of the QMAX-Card during the moving step (As the pressing device of McKenna is structured an arranged commensurately as claimed (a chamber and an arm with a pressing block), said device contacts the hinge section of the QMAX-Card in the close position as it is inserted into the chamber of the device of Claim 1 with the arm closing over it.), as in Claim 20.
Response to Arguments
Claim Objections
Applicant’s amendments sufficiently overcome those objections set forth over Claims 1, 4, and 14 by the prior office action. As such, those objections are withdrawn herein.
35 USC 112
Applicant’s amendments sufficiently overcome those rejections set forth under 35 USC 112(b) over Claims 1-20 as being indefinite by the previous office action. As such, those rejections under 35 USC 112(b) are withdrawn herein.
35 USC 102
Regarding Claim 1, Applicant’s arguments are on the alleged grounds that McKenna does not teach the particular construction of the claimed QMAX-Card having a hinge actuated by the pressing device.
Applicant’s arguments are not persuasive because they are drawn to the construction of the QMAX-Card which is not a positively claimed element of the device and is instead drawn to a mere intended workpiece not holding particular patentable weight aside from indicating a capability of the pressing device. Herein, as the pressing device of McKenna is commensurately structured and arranged as in Claim 1, said pressing device is fully capable of working on a hinged QMAX-Card as indicated by the claim.
Thus, Examiner maintains the rejection of Claim 1 under 35 USC 102(a)(1) as being anticipated by McKenna.
Regarding Claim 10, previously rejected under 35 USC 102, Applicant’s amendments sufficiently overcome the prior art of McKenna. However, Examiner sets forth the rejection of Claim 10 under 35 USC 103 as being unpatentable over McKenna in view of Andrews herein as necessitated by Applicant’s amendments now positively claiming the foam element.
35 USC 103
Regarding Claim 5, Applicant’s arguments are on the alleged grounds that the additional prior art of Elliot does not cure the above discussed alleged deficiencies in McKenna. However, Applicant’s argument is moot because the relevant deficiencies are not present in McKenna, as discussed above, and Elliot is not utilized therefor those alleged deficiencies.
Thus, Examiner maintains the rejection of Claim 5 under 35 USC 103 as being unpatentable over McKenna in view of Elliot.
Regarding Claim 7, Applicant’s arguments are on the alleged grounds that the additional prior art of Ceremony does not cure the above discussed alleged deficiencies in McKenna. However, Applicant’s argument is moot because the relevant deficiencies are not present in McKenna, as discussed above, and Ceremony is not utilized therefor those alleged deficiencies.
Thus, Examiner maintains the rejection of Claim 7 under 35 USC 103 as being unpatentable over McKenna in view of Ceremony.
Regarding Claim 16, Applicant’s arguments are on the alleged grounds that the additional prior art of Reynolds does not cure the above discussed alleged deficiencies in McKenna. However, Applicant’s argument is moot because the relevant deficiencies are not present in McKenna, as discussed above, and Reynolds is not utilized therefor those alleged deficiencies.
Thus, Examiner maintains the rejection of Claim 16 under 35 USC 103 as being unpatentable over McKenna in view of Reynolds.
Regarding Claims 17-20, Applicant’s arguments are on the alleged grounds that Chou does not teach a reason to combine its hinged cards with McKenna or the orientation of such cards therein McKenna.
Applicant’s argument is not persuasive because the hinged cards of Chou merely represent obvious alternatives to the two-plate, separate spacer system of McKenna, the cards remaining to achieve the identical function of sandwiching a sample to uniform thickness. The substitution of equivalents performing the same or substantially similar function as the original invention, by substantially the same means, are not patentable. As stated in MPEP 2144.04: “The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.” As Applicant has provided no evidence of criticality or unexpected results with using a hinged card, the simple substitution would be obvious to one of ordinary skill in the art.
Further, regarding the orientation of and processes performed by the card, Applicant’s argument is not persuasive because McKenna discusses the first and second substrate receiving sites as movable relative to each other about the hinge ([0074]), thereby mirroring the folding arrangement of Chou, but without the additional substrate hinge of Chou. Thus, in order to maintain the substrate receiving sites of McKenna as actuatable by the hinge, the card hinge of Chou must necessarily be positioned adjacent to the hinge so as to allow the folding to be achieved by McKenna. The progressive closure is accounted for by both McKenna and Chou, and any purported sample movements/behaviors would be fully expected to behave identically in the commensurately structured combination.
Thus, Examiner maintains the rejection of Claims 17-20 as being unpatentable under 35 USC 103 over McKenna in view of Chou.
Conclusion
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.
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798
