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 .
Election/Restriction
Newly submitted claims 29-30 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Inventions of claim 1 and claim 29 are directed to related products. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, the inventions as claimed have different designs. Claim 1 includes: a plurality of first open-ended conical body slots configured on the body surface of the body; and a plurality of second open-ended conical body slots configured on the body surface of the body, wherein the second open-ended conical body slots are of a different size from the first open-ended conical body slots; a lid adapted to securely cover the body, the lid comprising: a lid surface and a lid side wall extending downward from the lid surface, further the lid side wall detachably locks at the body side wall; a plurality of first lid slots configured on the lid surface of the lid, further the first lid slots are of a same size as of the first open-ended conical body slots; and a plurality of second lid slots configured on the lid surface of the lid, further the second lid slots are of a same size as of the second open-ended conical body slots, not required in claim 29. Claim 29 includes: a plurality of first openings extending through the surface, each of the first openings being a substantially square opening; and a plurality of second openings extending through the surface, each of the second openings being a substantially elongate slot that is larger than each of the first openings; the plurality of first openings and the plurality of second openings being configured to permit flow of a reagent through the surface for processing both a small tissue sample and a large tissue sample, not required in claim 1. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants. Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 29-30 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8, 12-16, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ali (US D953,562 S) in view of Braymer et al. (US 2007/0258864 A1).
Regarding claim 1, Ali teaches:
1. A cassette (see Fig. 1 & Title, Claim, Description) for holding or processing a sample (e.g., tissue), the cassette comprising:
a body (see Annotated Figs. 1, 8 for example) capable of receiving a sample (e.g., tissue, Title, Claim, Description), the body comprising:
a body surface and a body side wall extending upward from the body surface (see Annotated Figs. 1, 8 for example);
a plurality of first open-ended body slots configured on the body surface of the body (see Annotated Figs. 1, 8 for example); and
a plurality of second open-ended body slots configured on the body surface of the body (see Annotated Figs. 1, 8 for example), wherein the second open-ended body slots are of a different size from the first open-ended body slots (see Annotated Figs. 1, 8 & Fig. 2 for example);
a lid (see Annotated Figs. 1, 8 for example) capable of covering the body (see i.e., Figs. 8 & 16 and Description), the lid comprising:
a lid surface and a lid side wall extending downward from the lid surface (see Annotated Fig. 1 for example), further the lid side wall capable of being detachably closable at the body side wall (see i.e., Figs. 1, 8, 9 & 16 and Description);
a plurality of first lid slots configured on the lid surface of the lid (see Annotated Fig. 1 for example), further the first lid slots are of a same size as of the first open-ended body slots (see Figs. 1-3 showing the second lid slots are illustrated as being the same size as the second body slots in a manner similar to that shown in Fig. 1 and described at ¶ 0037 of the present application); and
a plurality of second lid slots configured on the lid surface of the lid (see Annotated Fig. 1 for example), further the second lid slots are of a same size as of the second body slots (see Figs. 1-3 showing the second lid slots are illustrated as being the same size as the second body slots in a manner similar to that shown in Fig. 1 and described at ¶ 0037 of the present application).
However, Ali does not explicitly teach: the plurality of first open-ended body slots and the plurality of second open-ended body slots are conical.
Braymer et al. teach a plurality of open-ended conical body slots (e.g., conical section 34) configured on a body surface of a body (see Figs. 1, 3B for example). It would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Ali with a plurality of open-ended conical body slots, as taught by Braymer et al. to provide for a smooth transition along the body slots. It has been held that a change in configuration of shape of a device is obvious absent persuasive evidence that the particular configuration is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). The Court in KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP 2141.
Annotated Figs. 1, 8 of Ali (US D953,562 S):
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With regard to limitations in claims 1-4, 12, 18, 19 (e.g., [...] for receiving a sample; [...] to provide optimized flow of reagents, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). "Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim." Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding claims 2-8, 12-16, 18-19, modified Ali teaches:
2. A cassette according to claim 1, wherein the plurality of first open-ended conical body slots, the plurality of second open-ended conical body slots, the plurality of first lid slots and the plurality of second lid slots are through-holes that extend through the body surface and through the lid surface (see Annotated Figs. 1 & 8 for example).
3. A cassette according to claim 1, wherein the first lid slots are aligned in parallel to the first open-ended conical body slots (see Annotated Fig. 1 & Figs. 2-3 for example).
4. A cassette according to claim 1, wherein the second lid slots are aligned in parallel to the second open-ended conical body slots (see Annotated Fig. 1 & Figs. 2-3 for example).
5. A cassette according to claim 1, wherein the second lid slots are surrounded by the first lid slots (see Annotated Fig. 1 & Figs. 2-3 for example).
6. A cassette according to claim 1, wherein the second open-ended conical body slots are surrounded by the first open-ended conical body slots (see Annotated Fig. 1 & Figs. 2-3 for example).
7. A cassette according to claim 1, wherein the dimensions of the first open-ended conical body slots are smaller relative to the dimensions of the second open-ended conical body slots (see Annotated Fig. 1 & Figs. 2-3 for example).
8. A cassette according to claim 1, wherein the dimensions of the first lid slots are smaller relative to the dimensions of the second lid slots (see Annotated Fig. 1 & Figs. 2-3 for example).
12. A cassette according to claim 1, wherein an opening of each of the first open-ended conical body slots and an opening of each of the first lid slots is smaller than an opening of each of the second open-ended conical body slots and an opening of each of the second lid slots (see Figs. 1-3 showing an opening of each of the first open-ended conical body slots and an opening of each of the first lid slots is substantially similar (i.e., smaller than an opening of each of the second open-ended conical body slots and an opening of each of the second lid slots) to that shown in Fig. 1 of the published application).
13. A cassette according to claim 1, wherein the body further comprises: a first body chamber having a plurality of second open-ended conical body slots; a second body chamber having a plurality of second open-ended conical body slots; a third body chamber having a plurality of second open-ended conical body slots; and a fourth body chamber having a plurality of second open-ended conical body slots (see Annotated Fig. 1 & Figs. 2-3 showing the claimed elements in a manner similar to what is shown in Fig. 1 and described at ¶ 0041, 0042 of the present application).
14. A cassette according to claim 1, wherein the second open-ended conical body slots configured in the first body chamber are in same direction as of the second open-ended conical body slots configured in the third body chamber (see Annotated Fig. 1 & Figs. 2-3 for example).
15. A cassette according to claim 1, wherein the second open-ended conical body slots configured in the second body chamber are in same direction as of the second open-ended conical body slots configured in the fourth body chamber (see Annotated Fig. 1 & Figs. 2-3 for example).
16. A cassette according to claim 1, wherein each of the plurality of first open-ended conical body slots has a substantially square opening at the body surface, and each of the plurality of second open-ended conical body slots has a substantially rectangular opening at the body surface (see Annotated Fig. 1 & Figs. 2-3 for example).
18. A cassette according to claim 1, wherein the body is capable of receiving a sample that is one of an animal, plant, yeast, bacteria, insect, chemical or synthetic molecule (a tissue cassette receives a tissue sample, which must come from one of an animal or a plant; Description).
19. A cassette according to claim 1, wherein the body is capable of receiving a sample that is one of a plasma sample, blood sample, sputum sample, stool sample, lavage, synovial fluid, tissue sample, tumor biopsy sample, cell culture, cytology specimen, synthetic polymer, natural polymer or combinations thereof (a tissue cassette receives a tissue sample; Description).
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ali (US D953,562 S) in view of Braymer et al. (US 2007/0258864 A1), and further in view of Ali (US 2018/0313811 A1).
Regarding claims 9-10, Ali does not explicitly teach: 9. A cassette according to claim 1, wherein the dimensions of each of the first open-ended conical body slot and each of the first lid slot being 1mm x 1mm in opening, and wherein the space between each slot being in the range of from 0.5mm to 1mm. 10. A cassette according to claim 1, wherein the dimensions of each of the second open-ended conical body slot and each of the second lid slot being in the range of from 0.5mm to 5mm in opening, and wherein the space between each of the second open-ended conical body slots and each of the second lid slots being in the range of from 0.5mm to 1mm.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have further modified Ali such that the dimensions of each of the first open-ended conical body slot and each of the first lid slot being 1mm x 1mm in opening, and wherein the space between each slot being in the range of from 0.5mm to 1mm; and the dimensions of each of the second open-ended conical body slot and each of the second lid slot being in the range of from 0.5mm to 5mm in opening, and wherein the space between each of the second open-ended conical body slots and each of the second lid slots being in the range of from 0.5mm to 1mm in order to provide dimensions suitable for working with tissue specimens because, as evidenced by Ali ‘811 the slot dimensions and spacing suitable for working with tissue specimens ranges from about 0.1 mm to 1 mm (¶ 0021, 0023, 0024), and to arrive at the claimed the dimensions of each of the first open-ended conical body slot and each of the first lid slot being 1mm x1mm in opening, and wherein the space between each slot being in the range of from 0.5mm to 1mm; and the dimensions of each of the second open-ended conical body slot and each of the second lid slot being in the range of from 0.5mm to 5mm in opening, and wherein the space between each slot each of the second open-ended conical body slots and each of the second lid slots being in the range of from 0.5mm to 1mm would not require undue experimentation in order to achieve optimal dimensions for a particular application. The Court in KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP 2141.
Regarding claim 11, Ali does not explicitly teach: 11. A cassette according to claim 1, wherein each of the second open-ended conical body slot and each of the second lid slot are about 30% narrower and between about 100% to about 700% longer than each of the first open-ended conical body slot and each of the first lid slot.
Ali ‘811 teaches: wherein each of second open-ended conical body slot and each of second lid slot are about 30% narrower and between about 100% to about 700% longer than each of first open-ended body slot and each of first lid slot (¶ 0021, 0023, 0024). It would have been obvious to one of ordinary skill in the art at the time the invention was made to have further modified Ali as taught by Ali ‘811 in order to provide dimensions suitable for working with tissue specimens. The Court in KSR, “[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one”, 550 U.S. at ___, 82 USPQ2d at 1396 (emphasis added), or solves a problem which is different from that which the applicant was trying to solve, may also be considered for the purposes of 35 U.S.C. 103. See MPEP 2141.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Braymer is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Braymer is analogous because it is directed to biological analysis, and it was relied on for the conical shaped slots (wells).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant is encouraged to amend the claims to include additional structural elements of the cassette.
Applicant is thanked for their thoughtful amendments to the claims.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHARLES CAPOZZI can be reached at (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798
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