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 .
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magniette (EP 2226671 A1) in view of Sato (JP 2003291535 A) (Carroll, Jr. et al. (US 2002/0171732) is provided as evidence that blackening is the result of carbonization).
Regarding Claim 1, Magniette (EP’671) teaches a method for labeling a microscope slide, the method comprising: applying any number of laser-markable inks (including a variety of pigments and/ or dyes) to at least a portion of the microscope slide from a range of colors from a color scheme, thereby forming an inked pattern on a surface of the microscope slide, wherein the inked pattern comprises a border and/ or one or more shapes to indicate usable space of the microscope slide (non-functional printed matter, including informative material, is not given significant patentable weight, MPEP 2112.01.III) (Figs. 1-4; [0016,0021,0036,0055,0061,0041-0045,0053,00]); exposing a patterned portion of whatever number of markable laser-markable inks on the microscope slide to a laser beam, thereby initiating a chemical reaction in the laser-markable ink to cause a change in color in the patterned portion of the laser-markable ink without etching a surface of the microscope slide (Abstract; [0009, 0045,0053]); and selecting and/ or modulating one or more parameters of the laser beam to change a color of a patterned portion of whatever inks are applied [0036,0039]. EP’671 fails to teach specifically a selection of a first color and a second color from the range of colors taught. However, its teachings of an available range of colors makes such selection obvious as a desired aesthetic modification, to emphasize certain markings, or for classification [0053-0055]. EP’671 teaches blackening [0048], which is a result of carbonization of an organic component (since organic components are those containing carbon required for carbonization and also because EP’671 teaches organic sensitizers, including sugar and amino acids with additional organic functional groups [0047]), shown by Carroll, Jr. et al. (US’732) [0007,0017]. In addition, a color change is reasonably likely to result in at least some change of brightness or perception of brightness. A value for a parameter for the laser beam is inherently selected in EP’671, and the parameter necessarily includes every parameter from a set consisting of a wavelength, an energy density, a laser speed, a power, a frequency, a pulse length, a spot size, and a spot shape. In addition, EP’671 teaches selecting a wavelength in a range of 800-2500 nm [0039], and selecting a wavelength is equivalent to selecting a frequency. EP’671 also teaches selecting a power (“low power”), which necessarily includes selecting an energy density [0038,0041]. EP’671 also teaches selecting laser marking speed [0069] and spot size [0069].
EP’671 fails to teach applying a first and second ink to at least an overlapping portion of the microscope slide. Sato (JP’535) is analogous art in the field of printing with laser markable ink [0001], including overlapping layers of color changing ink [0009] to form a pattern of light and dark [0011] and print characters, figures, numbers, and barcodes [0008,0018,0024]. Also, JP’535 suggests instantaneous irradiation [0023], which suggests a pulse duration. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of EP’671 by applying overlapping layers of a first and second ink, because JP’535 suggests applying overlapping dots of ink, including color-changing ink, to form patterns (e.g. characters, figures, barcodes or numbers) of light and dark cells, where EP’671 teaches printing figures, numbers, characters, and barcodes with laser markable ink.
Regarding Claim 3, EP’671 teaches a coating thickness of between 5 and 100 microns [0050].
Regarding Claim 4, EP’671 teaches blackening [0048], which is a result of carbonization, shown by Carroll, Jr. et al. (US’732) [0007,0017].
Regarding Claim 5, EP’671 teaches that the ink comprises a dye, pigmented ink, a polymer additive (epoxy), an inorganic material, and a solvent [0047,0054,0032,0034,0075].
Regarding Claim 6, the portion of the microscope can be a tab (tag), a label (markable region), and a pattern (Claims 1, 4). As explained in the rejection of Claim 1 above and in the rejection under 35 USC 112(b), any significance of the printed pattern taught in EP’671 is not given patentable weight as non-functional printed matter. MPEP 2112.01.III. Moreover, the very teaching of a pattern and/ or color change is considered inherently “indicative of a usable are of the microscope slide,” including a usable area which is an area on the microscope slide configured to receive a sample, since any pattern on the microscope can be said to indicate that an area on a microscope is configured to receive a sample, since this is the purpose of an area of a microscope slide, and any pattern can be associated with an interpretation.
Regarding Claim 7, the patterned portion includes a two-dimensional bar code (Figs. 3-4; [0051]).
Claim(s) 8-13 and 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magniette (EP 2226671 A1) in view of Angros (US 2010/0073766), White (DE 2112908), and Sato (JP 2003291535 A) (Carroll, Jr. et al. (US 2002/0171732) is provided as evidence that blackening is the result of carbonization).
Regarding Claims 8 and 15, Magniette (EP’671) teaches a method for labeling a microscope slide, the method comprising: applying any number of laser-markable inks (including a variety of pigments and/ or dyes) to at least a portion of the microscope slide from a range of colors from a color scheme, thereby forming an inked pattern on a surface of the microscope slide, wherein the inked pattern comprises a border and/ or one or more shapes (including a cross shape – for example the lower case and capitalized letter “t,” Figs. 3-4; also note that a cross-shape is a basic and conventional shape, whether as a “t” an “x” or a cross, such as that of The American Red Cross, with legs of equal length, barcode 4) to indicate usable space of the microscope slide (non-functional printed matter, including informative material, is not given significant patentable weight, MPEP 2112.01.III) (Figs. 1-4; [0016,0021,0024,0036,0055,0061,0041-0045,0053]); exposing a patterned portion of whatever number of markable laser-markable inks on the microscope slide to a laser beam, thereby initiating a chemical reaction in the laser-markable ink to cause a change in color in the patterned portion of the laser-markable ink without etching a surface of the microscope slide (Abstract; [0009, 0045,0053]); and selecting and/ or modulating one or more parameters of the laser beam to change a color of a patterned portion of whatever inks are applied [0036,0039]. EP’671 fails to teach specifically a selection of a first color and a second color from the range of colors taught. However, its teachings of an available range of colors makes such selection obvious as a desired aesthetic modification, to emphasize certain markings, or for classification [0053-0055]. EP’671 teaches blackening [0048], which is a result of carbonization of an organic component (since organic components are those containing carbon required for carbonization and also because EP’671 teaches organic sensitizers, including sugar and amino acids with additional organic functional groups [0047]), shown by Carroll, Jr. et al. (US’732) [0007,0017]. In addition, a color change is reasonably likely to result in at least some change of brightness or perception of brightness. A value for a parameter for the laser beam is inherently selected in EP’671, and the parameter necessarily includes every parameter from a set consisting of a wavelength, an energy density, a laser speed, a power, a frequency, a pulse length, a spot size, and a spot shape. In addition, EP’671 teaches selecting a wavelength in a range of 800-2500 nm [0039], and selecting a wavelength is equivalent to selecting a frequency. EP’671 also teaches selecting a power (“low power”), which necessarily includes selecting an energy density [0038,0041]. EP’671 also teaches selecting laser marking speed [0069] and spot size [0069].
EP’671 fails to teach applying a first and second ink to at least an overlapping portion of the microscope slide. Angros (US’766) is analogous art in the field of marking microscope slides and teaches ink, including colored ink, applied to overlapping portions of a microscope slide (e.g. coverslip and slide or upper and lower surfaces) (Abstract; Fig. 13, 14; [0040,0063-0064]). US’766 also teaches cross shapes (Fig. 14). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of EP’671 by applying a first and second ink to at least an overlapping portion of the microscope slide, because US’766 suggests applying an ink either to a coverslip portion of a slide, an upper surface of the slide, and/ or to a lower surface of a slide.
US’766 suggests labeling glass coverslips by laser marking, including with bar codes, and suggests that such labeling can be done before the coverslips are separated from the sheet from which they are manufactured [0010,0034]. The combination of EP’671 in view of US’766 fails to teach labeling the slides themselves in the same way (labeling on a sheet, followed by cutting out slides).
Cutting (separating) a glass sheet into individual microscope slides was conventional at the time of invention. For example and as evidence of conventionality, White (DE’908), a patent from 1972 teaches cutting a sheet of glass into microscope slides (Abstract). Moreover, labeling large sheets of material before cutting the sheets into smaller labels was a well-known and conventional way of producing labels at the time of invention. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of EP’671 in view of US’766 by applying the laser-markable inks to the sheet in a pattern which when the glass sheet is cut will result in the ink being applied to individual microscope slides, separated from the sheet, as a convenient and time-saving way of mass producing marked microscope slides, because it was conventional to mass produce microscope slides by cutting them from a glass sheet. Additionally, it is prima facie obvious to perform the steps of coating the slides (whether already separated or as components of a unified glass sheet) and separating the slides from the sheet and from each other in any order or simultaneously. MPEP 2144.04.IV.C.
The combination of EP’671 in view of US’766 and DE’908 fails to teach overlapping layers of ink. JP’535 is analogous art in the field of printing with laser markable ink [0001], including overlapping layers of color changing ink [0009] to form a pattern of light and dark [0011] and print characters, figures, or numbers [0008,0018,0024]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of EP’671 in view of US’766 and DE’908 by applying overlapping layers of a first and second ink, because JP’535 suggests applying overlapping dots of ink, including color-changing ink, to form patterns (e.g. characters, figures, barcodes or numbers) of light and dark cells, where EP’671 teaches printing figures, numbers, characters, and barcodes with laser markable ink.
Regarding Claim 9, EP’671 teaches a coating thickness of between 5 and 100 microns [0050].
Regarding Claims 10, 16, and 17, EP’671 teaches a variety of color pigments [0043-0046] and both black and a color different from black [0046, 0048,0054] and teaches applying a second laser-markable ink of a second color to at least another portion of a slide material. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the combination of references by applying a second laser-markable ink of a second color to another portion of the sheet from which the slides are cut.
Regarding Claims 12 and 18, EP’671 teaches blackening [0048], which is a result of carbonization of an organic component (since organic components are those containing carbon required for carbonization and also because EP’671 teaches organic sensitizers, including sugar and amino acids with additional organic functional groups [0047]), shown by Carroll, Jr. et al. (US’732) [0007,0017].
Regarding Claim 13, the carbonization changes a brightness of the color [0048], and the patterned portion includes a two-dimensional bar code (Figs. 3-4; [0051]).
Regarding Claim 19, the carbonization changes a brightness of the color [0048].
Regarding Claim 20, the patterned portion includes a two-dimensional bar code (Figs. 3-4; [0051]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Magniette (EP 2226671 A1) in view of Angros (US 2010/0073766), White (DE 2112908), and Sato (JP 2003291535 A) (Carroll, Jr. et al. (US 2002/0171732) is provided as evidence that blackening is the result of carbonization) as applied to Claim 8 above, and further in view of Secord et al. (US 2003/0194507).
Regarding Claim 14, EP’671 teaches drying and polymerizing the ink [0030-0031,0075]. The combination references cited for the rejection of Claim 8 above fails to teach heating. It is conventional to heat a composition to dry and/ or to polymerize it. Additionally, Secord et al. (US’507) is analogous art in the field of marking microscope slides with a laser markable coating [0087] and suggests heating to dry and/or to cure a coating [0009,0018,0038]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of the combination of EP’671 in view of US’766, DE’908, and JP’535 by heating the laser-markable ink prior to exposing it to a laser beam, because heating is conventional to dry and/ or polymerize a coating and also because US’507 suggests heating a laser-markable coating on a microscope slide to dry and/ or to cure it.
Response to Arguments
Applicant’s amendment to the claims, filed 27 March 2026, with respect to the rejections of Claims 1-20 under 35 USC 112(a) and (b) has been fully considered and overcomes the rejections of Claims 1-20 under these paragraphs. The rejections of Claims 1-20 under 35 USC 112(a) and (b) have been withdrawn.
Applicant's arguments filed 27 March 2026 with respect to the rejections of Claims 1,3-10, and 12-20 under 35 USC 103 have been fully considered but they are not persuasive.
In response to Applicant’s arguments that an amendment to the claims requires two constraints: that the first and second inks at least partially overlap and that both inks are applied to the same surface of the microscope slide (Remarks, pp. 8-11), Sato (JP’535) is now cited to show the obviousness of patterning overlapping layers of laser-markable inks to form bar codes, characters, numbers, and figures on an object.
Conclusion
No claim is allowed.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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