DETAILED ACTION
In application filed on 11/06/2023, Claims 1-27 are pending. The claim set submitted on 02/04/2025 is considered because this is the most recent claim set with some preliminary amendments. Claim 24 is considered in the current office 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/06/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant's election with traverse of Group IV in the reply filed on 06/01/2026 is acknowledged. The traversal is on the ground(s) that:
1. At least the claims of Groups IV and V should be examined together.
Applicant submits that at least the claims of Groups IV and V ( claims 24-27) should be prosecuted together in this application.
1.1. Technical relationship between the two groups of claims
The Examiner asserts that the inventions listed as Groups IV and V do not relate to a single general inventive concept under PCT Rule 13 .1. Applicant submits, however, that the Examiner has not properly construed or applied the unity of invention standard applicable under PCT Rule 13.
Under PCT Rule 13 .2, the application fulfills the unity of invention requirement when there is "a technical relationship among those inventions involving one or more of the same or corresponding special technical features". In the present case, the kit of claim 24 comprises an apparatus designed for preparing a plurality of microscope slides and specifically adapted to carry out the method of claims 25-27 for preparing a plurality of microscope slides. As such, Applicant submits that there is indeed a common technical feature, such that the claims of Groups IV and V relate to a single general inventive concept within a proper meaning of PCT Rule 13 .1, so that the claims of both groups should be examined together.
1.2. Consistent interpretation under the International Treaty
The Examiner will note that the International Searching Authority, which also applies the unity of invention standard of PCT Rule 13, found.no unity of invention objection between the method claims 25-27 and the kit claim 24 as dependent on the apparatus claim 12 (the limitations of which have been incorporated into US claim 24). An international application which complies with the unity of invention requirements must then be accepted by all of the designated and elected offices, including the USPTO, since Article 27(1) of the Patent Cooperation Treaty does not permit any national law or national office to require compliance with different regulations relating to the contents of the international application. Thus, the U.S. application must be examined for unity of invention consistent with the Patent Cooperation Treaty, not just
by giving verbal assent to the unity of invention standard but in actual application of the standard. See Caterpillar Tractor Co. v. Commissioner of Patents and Trademarks, 23 l USPQ 590 (E.D. VA. 1986)
For the above reasons, applicants request that the restriction requirement be withdrawn.
This is not found persuasive because:
Groups I-V lack unity on invention under 37 CFR 1.475 and PCT Rule 13.1 because even though the inventions of these groups require the technical feature of a coverplate assembly, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Cosby et al. (US20030107946A1).
In addition, Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of one coverplate assembly, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Cosby et al. (US20030107946A1).
Lastly, Groups III-IV lack unity of invention because even though the inventions of these groups require the technical feature of a frame; and a rotatable member connected to, and rotatable relative to, the frame; wherein the rotatable member is rotatable between a first position and a second position about a rotational axis; and wherein the rotatable member comprises a slide fastener to affix the plurality of microscope slides to the rotatable member, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Muir (GB2197949A, submitted in IDS 11/06/2023).
Applicant should note that the findings of the International Searching Authority (ISA) and International Preliminary Examining Authority (IPEA) are not binding on U.S. examiners during national stage examination.
Under MPEP § 1893.03(e), the U.S. examiner is free to consider any portion of the international reports but will apply U.S. laws, regulations, and patentability standards independently.
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-23 and 25-27 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/01/2026.
Further, Applicant is reminded that any future amendment must clearly indicate with claims are readable on the elected invention.
Lastly, In accordance to MPEP 821.04, if the claims in the elected invention are found allowable, the examiner will consider a rejoinder of the non-elected claims including any properly amended dependent claims that require the limitations of an allowable claim.
Examiner advices the Applicant to amend nonelected Claims, where appropriate , to require all limitations of an elected allowable claim to facilitate a potential rejoinder.
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.
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Muir (GB2197949A, submitted in IDS 11/06/2023) in view of Cosby et al. (US20030107946A1).
Examiner submits that that the limitations of Claim 1 has been inserted into the rejection of Claim 24 below in light of the recited “a coverplate assembly according to claim 1”.
Regarding Claim 24, Muir teaches a kit (referred to as box [Fig. 1, ref. 1]) comprising an apparatus for preparing a plurality of microscope slides (referred microscope slide treatment apparatus [Claim 1]) comprising:
a frame (referred to as end walls [Fig. 1, ref. 3]); and
a rotatable member (referred to as slide mounting bars 4 [Fig. 1, ref. 4]) connected to (See Fig. 1), and rotatable relative to (See Abstract…the bars 4 are rotatable between first, second and third positions…), the frame (referred to as end walls [Fig. 1, ref. 3]);
wherein the rotatable member (referred to as slide mounting bars 4 [Fig. 1, ref. 4]) is rotatable between a first position and a second position (See Abstract…slide mounting means is movable with respect to the support between first and second positions) about a rotational axis; and
wherein the rotatable member (referred to as slide mounting bars 4 [Fig. 1, ref. 4]) comprises a slide fastener (See Page 2, line 13…a plurality of clips) to affix the plurality of microscope slides (See Page 2, line 13…a plurality of clips for holding slides) to the rotatable member (referred to as slide mounting bars 4 [Fig. 1, ref. 4]).
Muir does not teach a kit comprising a coverplate assembly disclo Claim 1,
In the analogous art of a cover slip mixing apparatus having a support and a flexible cover slip positioned over and forming a chamber between the support and the cover slip, Cosby teaches a kit (See Para 0002… a glass cover slip and support assembly used in hybridization methods that provides mixing of the hybridization solution.) comprising a coverplate assembly according to Claim 1 (See Abstract… A cover slip mixing apparatus) for a microscope slide (referred to as a glass slide, such as a microscope slide [Para 0019]; or support [Para 0019, Fig. 1, ref. 12]), the coverplate (See Abstract; Fig. 1, 5, ref. 14… flexible cover slip) comprising:
a coverplate body (See Abstract; Fig. 1, 5, ref. 14… flexible cover slip; Examiner submits that the cover slip has a body; See Para 0022; Fig. 1…an outer surface 28 of the cover slip 14);
at least two flanges (referred to as support bars 42, 44 [Para 0031]) arranged on (See Fig. 1 for the arrangement) a surface (See Fig. 1) of the coverplate body (See Para 0022; Fig. 1…an outer surface 28 of the cover slip 14); and
a magnet or a magnetic material (referred to as One or more magnetizable components 26 g, 26 h [Para 0030; Fig. 5]) configured to cooperate with a magnetic counterpart (See Para 0030… The electromagnets 32 g, 32 h located with respect to the magnetic components 26 g, 26 h ) to affix the coverplate to a microscope slide (See Para 0030… One or more magnetizable components 26 g, 26 h are located on the cover slip outer surface 28.), thereby providing a capillary gap (referred to as a chamber [Para 0016, Fig. 1, ref. 16]) between the coverplate body (See Abstract; Fig. 1, 5, ref. 14… flexible cover slip; Examiner submits that the cover slip has a body; See Para 0022; Fig. 1…an outer surface 28 of the cover slip 14) and the microscope slide (referred to as a glass slide, such as a microscope slide [Para 0019]; or support [Para 0019, Fig. 1, ref. 12]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the Kit of Muir to include “a coverplate assembly according to Claim 1,as taught by Cosby for the benefit of providing the mixing of the hybridization solution (Cosby, Para 0002), allowing for the providing devices without the problem of hybridization non-uniformity due to formation of concentration gradients resulting in unevenly dispersed conjugates. Thus, forming a chamber that provides even dispersal throughout the hybridization solution during the reaction process (Cosby, Para 0005).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OYELEYE ALEXANDER ALABI whose telephone number is (571)272-1678. The examiner can normally be reached on M-F 7:30am-5:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached on (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OYELEYE ALEXANDER ALABI/ Examiner, Art Unit 1797
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