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 § 102
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.
Claims 1-2, 6 and 8-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Revie et al. (US 20160123850).
Regarding claims 1-2 and 11-13
Revies discloses quality control films (i.e., which would have a surface) for histopathology staining that comprise cellulose with no plasticizers (abstract, paras 0001-0003, and claims 1 and 10).
Regarding claims 6 and 9
Revie discloses that the cellulose film may be adhered to a slide using a glue (i.e., a coating that would be on at least one side) (para 0050).
Regarding claims 8 and 10
The slide may be viewed as a protective sheet and a barrier coating, given the broadest reasonable interpretation.
Claim Rejections - 35 USC § 103
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.
Claims 3-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Revie et al. (US 20160123850), as applied to claims 1-2, 6 and 8-13 above.
Regarding claims 3-5
Revie discloses that the substrate can be cellulose or gelatine (i.e., a protein) (claim 10), as such it would have been prima facie obvious to use both cellulose and gelatine in the substrate, because combining two or more materials disclosed by the prior art for the same purpose to form a third material that is to be used for the same purpose has been held to be a prima facie case of obviousness, see In re Kerkhoven, 205 U.S.P.Q. 1069.
Regarding claim 7
Revie discloses that the film can be 5 to 30 microns thick (para 0049). As the reference range overlaps the claimed range the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Response to Arguments
Applicants argue against the 112 rejection over claim 7.
Applicants amendment to claim 7 overcomes the issues of indefiniteness and the rejection has been withdrawn.
Applicants argue against the prior art rejections.
Applicants argue that Revie is silent as to the use of plasticizers. While this is correct it is not persuasive, as there is nothing that would lead the skilled artisan to think a composition included components not taught or listed, and implies that no plasticizer is present. Further, it is noted that any cellulose film with less than 2 plasticizers would anticipate claim 1.
Applicants argue that Revie does not teach the technical advantages of a cellulose film with less than two plasticizers. While this may be true it is not persuasive as applicants have presented no evidence of new or unexpected results for making a cellulose film with less than two plasticizers, and again nothing in Revie suggest the use of a plasticizer.
Applicants argue that a skilled artisan would use a plasticizer to get better quality films. This is not persuasive and while a plasticizer may give films with better qualities, it is not required to form a useful film. Further, Applicants even admit that plasticizer free cellulose films are known and would anticipate the claim even if they were used in batteries instead of histopathology staining, as long as it would be capable for the same purpose, and applicants have provided no evidence beyond opinion and conjecture that such would be the case.
Applicants argue that Revie repeatedly refers to cellophane. This is not persuasive as Revie also discloses cellulose. Further, applicants have not shown that cellophane films cannot be formed with less than two plasticizers.
Applicants argue that a pure or natural cellulose films cannot be used to create a film by itself. If this is true then it is expected that the instant invention would be inoperative for its claimed use as well.
The remaining arguments have been fully considered but are not persuasive for the same reasons given above.
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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
