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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Specifically, claims 1-16, invoke 112f with the following claim limitations:
“means for individually adjusting tensions in the blades” as recited in claim 3, wherein no specific definition is given in the instant specification
“ a tensioning mechanism configured for varying tensions in the blades”, recited in claim 10, wherein no specific definition is given in the instant specification.
Furthermore, Examiner Wecker notes that theses claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
Claim(s) 1, 2, 4, 15 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tawfik et al (US PGPub 2010/0076473 ), as cited by the IDS.
Regarding Claim 1, Tawfik et al teaches a biological tissue cutting device (referred to as tissue slicer 10) for slicing a biological tissue sample (see [0040] and Figure 1), comprising: a base (base 20 or 220, having a partially open horizontal surface 25 or 225) defining a cutting surface (i.e. the horizontal surface 25 or 225) against which the biological tissue sample (i.e. the biological tissue specimen) is laid on (see [0040] and Figure 1);
a cutting assembly (referred to as blade cartridge 60 or blade cartridge 260 (illustrated in Figure 8)) having a frame (i.e. the cartridge holding bracket 70 or cartridge plate 272 (illustrated in Figure 8)) pivotably mounted to the base, the frame pivotable relative to the base about a pivot axis, and blades (i.e. blades 65 or 265) secured to the frame, the frame being movable from an open position in which the blades is distanced from the cutting surface to a closed position in which the blades contact or are proximate to the cutting surface (see [0047]-[0049], [0052]-[0053], Figures 4-6 and 8-10).
Regarding Claim 2, Tawfik et al teaches that the blades are individually removable from the cutting assembly (see [0015] and [0047]).
Regarding Claim 4, Tawfik et al teaches that the cutting surface extends continuously along a width and a depth of the base (20 or 220) (see Figures 1 and 8, [0040] and [0050]).
Regarding Claim 15, Tawfik et al teaches a handle (275) secured to the frame, the handle sized to be engaged by a hand of a user for moving the frame between the open position and the closed position (see [0054]).
Regarding Claim 16, Tawfik et al teaches that the cutting surface (i.e. horizontal surface 25) defines grooves (referred to as openings or slits), the blades at least partially received in the grooves in the closed position of the frame (see [0040]).
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tawfik et al as applied to claim 1 above, and further in view of Smith et al (US PGPub 2022/0364960).
Regarding Claim 3, Tawfik et al does not disclose means for individually adjusting tensions in the blades.
However, in the analogous art of microtome (i.e. blade) and transfer tape systems, Smith et al teaches an exemplary microtomy system 150, for use within a microtomy system having a plurality of tension control devices. The microtomy system 150 can include any combination of tension control devices positioned at different points along a transfer tape 120 to control a level of tension along the transfer tape 120. The elements can be used independently or in combination with one another such that the microtomy system 150 can include just one of the tension control devices or any combination of the tension control devices (see [0047]).
It would have been obvious to one of ordinary skill in the art to modify the tissue slicer of Tawfik et al by further incorporating a tension control device (as taught by Smith et al) for the benefit of controlling the level of tension along the blades of the tissue slicer.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tawfik et al as applied to claim 4 above, and further in view of Anderson et al (US PGPub 2019/0301980).
Regarding Claim 5, Tawfik et al does not teach that the cutting surface is flat.
However, in the analogous art of automated tissue section capture, indexing and storage systems, Anderson et al teaches that thin tissue sections have a propensity to curl into a cylindrical conformation as they are cut from the sample block, which would be difficult to unravel in an automated manner for applications like microscopy, which require sections to be flat. This phenomenon can be avoided by drawing the section into a stable, flat conformation during the sectioning process before it is able to curl (see [0051] and [0061]). It would have been obvious to one of ordinary skill in the art to utilize a flat cutting surface (as taught by Anderson et al) for the provide of providing a tissue specimen surface that is suitable for microscopy.
Regarding Claim 6, Tawfik et al and Anderson et al teaches that the base (i.e. 220) includes a base plate (referred to as pin base 252) and a cutting board (referred to as horizontal surface 225) removably secured to the base plate (220), the cutting surface defined by the cutting board (see Figure 8 and [0050] of Tawfik et al).
Regarding Claim 7, Tawfik et al and Anderson et al teaches that the cutting assembly (shown as blade cartridge 260, including blades 265) is pivotably mounted to the base plate (through pivoting member 240) (see Figures 8-9 and [0050]-[0051] of Tawfik et al).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tawfik et al as applied to claim 1 above, and further in view of Islam et al (US PGPub 2016/0016322).
Regarding Claim 8, Tawfik et al does not teach that the cutting surface has a rough surface finish.
However, in the analogous art of blade systems, Islam et al teaches that surfaces 112 may be textured to reduce or prevent dust and/or other shaving or cutting products from sticking to blade 100. For example, the texture may enhance a surface roughness of surfaces 112 (see [0033]). It would have been obvious to one of ordinary skill in the art to provide the cutting surface with a rough (textured) surface finish (as taught by Islam et al) for the benefit of reducing or preventing dust when the blades contact the surface and facilitating self-cleaning of the blades.
Allowable Subject Matter
Claim 9-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding Claims 9-10, none of the prior art teaches or fairly suggests that the frame includes two side supports extending transversally to the pivot axis and two blade holders extending transversally to the two side supports, ends of the blades mounted to the two blade holders.
In addition, regarding claims 11-14, none of the prior art teaches or fairly suggests a tensioning mechanism, which include blade trays, the blades secured to one or more of two blade holders via the blade trays, the blade trays secured to the one or more of the blade holders via tensioning screws threadingly engaged to the blade trays, rotation of the tensioning screws relative to the blade trays translate into a movement of the blade trays relative to the one or more of the two blade holders thereby varying the tension in the blades.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER WECKER whose telephone number is (571)270-1109. The examiner can normally be reached 9:30AM - 6 PM EST M-F.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at 571-272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNIFER WECKER/ Primary Examiner, Art Unit 1797
Prosecution Insights