Detailed Office Action
Applicant’s arguments dated 12/22/2025 have been entered and fully considered. Claims 10-20 are withdrawn from examination. Claims 1-20 are pending.
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 .
Response to Arguments
Applicant’s argument that the art of LABTAG is not prior art since it has the same inventor as the instant application is persuasive. The 35 USC 102 rejection over LABTAG is withdrawn. The publication date of LABTAG is less than a year prior to the priority date of the instant application, thus not a prior art. The Examiner notes that the priority date of the instant application as discussed in the non-final rejection of 10/2/2025 is maintained and reiterated in this office action.
Applicant’s argument regarding the 35 USC 103 rejection and the second motivation statement on the ability of the label to resist peeling off, is persuasive. This motivation statement is withdrawn in this office action.
Applicant’s argument regarding the 35 USC 103 rejection and the first motivation statement regarding identifying the sample is not persuasive and the Examiner maintains this rejection. By identifying, the Examiner intended to indicate finding the sample (emphasis added by the Examiner). The primary reference of ALLEN discloses that some of these sample blocks are small {[0049] note small biopsy samples}. Therefore, the possibility exists that some of these sample blocks mistakenly are mixed with non-sample blocks and other items and therefore lost. In the same filed of endeavor, the secondary art of ONO, teaches a method of finding these samples and thus retrieving them {[0002]}. Therefore, combination of ALLEN and ONO, considering this motivation, is proper.
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).
Priority
Instant application claims priority to the provisional application 63,384,470 with a priority date of 11/21/2022. However, after careful examination of this provisional application, the Examiner determined that this provisional application only discloses the subject matter of withdrawn claims 10-20 and not method claims 1-9. Therefore, the Examiner assigns the priority date of examined claims 1-9 as their filing date of 11/21/2023 (emphasis added by the Examiner).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3 and 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over ALLEN (US-2005/0226770), hereinafter ALLEN, in view of ONO (of record, JP-2020030269-A, English translation provided by the Examiner). Note that the italicized text below are the instant claims. Note the bolded text are the paragraphs of the cited arts.
Regarding claims 1-3 and 7-8, ALLEN discloses A method for handling an embedded tissue {[abstract], [0002]} comprising:
embedding a tissue in an embedding agent into a block {[0005], [0047], [0057], [0060], [0079]}.
Allen generally talks about identification of sample by placing indicia on them {[0049]}. However, ALLEN is silent on the details of this label or indicia having a metal layer, support liner, and being adhesive.
In the same filed of endeavor that that is related to labels, ONO discloses obtaining a label having a metal component therein; and adhering the label having the metal component therein on a surface of the block; whereby the block is detectable using metal detection (claim 1), wherein obtaining the label with the metal component includes obtaining the label with a metallic layer (claim 2), including removing the label from a support liner to expose an adhesive, to then proceed with the adhering (claim 3), including printing or inscribing data on the label prior to the adhering (claim 7), including performing metal detection of a waste disposal device, and detecting the block with the label thereon (claim 8) {note that block was disclosed by ALLEN, [0005], [0010] note peeling release paper or support liner, [0002] note using metal detector to determine the presence of label and thus identifying them which could be in a waste basket, [0013] note printing data on the label}.
At the effective filing date of the instant invention, it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of ONO in the method of ALLEN and have provided the label as described by ONO on the block of ALLEN.
As disclosed by ONO, the advantage of this label is the ability to find the item that has this label on it {[0002]}.
Regarding claim 5-6 limitations of “including storing the block with the label thereon (claim 5), wherein storing the block with the label thereon includes storing the block with the label thereon in a refrigerator or in sub-zero temperatures (claim 6)” the Examiner submits that it is known to store tissue samples in a refrigerator to preserve them for further analysis.
Regarding claim 9, ALLEN discloses including embedding the tissue in the embedding agent into the block includes embedding a cassette portion in the block {[0004]-[0006], [0047], [0049]-[0053]}.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over ALLEN and ONO as applied to claim 1 above, and further as evidenced by LABTAG (of record; Labtag By Ga International: "ParafiGARD(TM) - Metal-Detectable Labels for Wax Blocks (Patent pending)", 11 April 2023 (2023-04-11), XP093147847, Retrieved from the Internet: URL:https://www.youtube.com/watch?v=w70mR4JrfKE), hereinafter LABTAG. Note the bolded text is the timestamp of the video. Note that LABTAG is an evidentiary document and not a prior art rejection.
Regarding claim 4, combination of ALLEN and ONO discloses all the limitations of claim 1 as discussed above. As evidenced by LABTAG, it is known that the labels are provided by a roll {[0:06] note the roll}. Therefore, it would have been known to an artisan to have provided the label of ONO in the form of a roll that reads on the limitation “including obtaining a roll including the label, detaching the label from a remainder of the roll, to then proceed with the adhering”.
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 S. BEHROOZ GHORISHI whose telephone number is (571)272-1373. The examiner can normally be reached Mon-(alt Fri) 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S. BEHROOZ GHORISHI/ Primary Examiner, Art Unit 1748