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 .
Rejections
Claim Rejections - 35 USC § 102
1. 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.
2. Claims 1, 2, and 5-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2021-508820 Dobos et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
Dobos, page 6, lines 15-23 discloses a “system” comprising at least one chaotropic ion (page 6, line 20) and probe that achieves penetration throughout a tissue with a homogeneous distribution in the tissue for high specificity of tissue staining by definition of “staining” of Dobos. The system of Dobos contains the components required by the instant claims and is therefore necessarily a supramolecular histochemistry system for staining. See Dobos, page 8, lines 5-7, noting the ionic guanidinium chaotropic agent which falls within the scope of the instant claims. The instant claim 5 does not require the complexing agent to be present. It is therefore still optional per claim 1. Claims 5-7 merely further define the complexing agent. Dobos’ system falls within the scope of claims 5-7 therefore. The staining agents of Dobos contain one or more antibodies to selectively attach the dye as a biomarker which falls within the scope of the probes of the instant claims 1 and 8. Dobos, paragraphs [0075], [0105] noting the 1-PBS buffer which falls within the scope of the instant claims 9-12, and remainder of the document. The instant claim 1 makes the complexing agent of the instant claim 13 optional. Claim 13 just requires them to be in different vehicles. If the complexing agent is not present, it is in a different vehicle than the required components of Dobos and the instant claim 1. Therefore, Dobos is taken as anticipating the instant claim 13. Dobos thereby anticipates the instant claims 1, 2, and 5-13.
Claim Rejections - 35 USC § 103
3. 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.
4. Claims 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2021-508820 Dobos et al., the machine English translation thereof provided by the examiner being referenced below unless otherwise noted.
The discussion of paragraph 2 above is repeated here in its entirety.
Dobos does not disclose the particulars precisely of the methods of the instant claims 14-21. These particulars appear to be commonly used in histology methods and were representative of what the examiner did in staining tissues with different systems.
It would have been obvious to one of ordinary skill in the art prior to the instantly claimed invention to perform the instantly claimed methods of the instant claims 14-21 from the teachings of Dobos taken in view of the state of the art prior to the instantly claimed invention because it is within the ability of the ordinary skilled artisan to determine the conditions and order of applying staining components to maximize staining of various tissue types as is seen from the general discussions of tissue staining of Dobos which is evidence that it is within the ability of the ordinary skilled artisan to determine the particulars of staining, including those of the instant claims 14-21, to maximize staining.
Conclusion
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to PATRICK D NILAND whose telephone number is (571)272-1121. The examiner can normally be reached on Monday to Friday from 10 to 5.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert S Jones, can be reached at telephone number 571-270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Examiner interviews are available via a variety of formats. See MPEP § 713.01. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) Form at https://www.uspto.gov/InterviewPractice.
/PATRICK D NILAND/ Primary Examiner, Art Unit 1762
Prosecution Insights