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 .
Election/Restrictions
Applicant’s election of Species I in the reply filed on 15 May 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
200 (e.g., paragraph 0045)
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description:
FIG. 11C:
γ
H
,
γ
L
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add/remove the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 4 of U.S. Patent No. 10,309,881 B2 to Glaeser et al., hereinafter Glaeser. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 12 of the present application are anticipated by claims 3 and 4, respectively, of Glaeser.
Claim 1 of the present application is anticipated by claim 3/1 of Glaeser. Claim 3/1 of Glaeser recites a method (claim 1) comprising: (a) providing an electron microscopy grid (claim 1); (b) depositing an aqueous suspension including an electron microscopy sample on the electron microscopy grid (claim 1); (c) contacting an edge of the electron microscopy grid with an absorbent material (claim 3/1); (d) allowing a thickness of the aqueous suspension to decrease over a period of time (claim 1, operation (e)); and (e) freezing the aqueous suspension (claim 1, operation (f)).
Claim 12 of the present application is anticipated by claim 4/3 of Glaeser. Claim 3 of Glaeser recites the method of claim 1 of the present application (discussed supra), wherein the absorbent material comprises filter paper (claim 4/3).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 23-24 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 23/18 recites the limitation “the air of the stream of air”. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted claim 23 as depending from claim 22.
Claim 24/18 recites the limitation “a relative humidity of the humid air”. There is insufficient antecedent basis for this limitation in the claim. For the purpose of compact prosecution, the Examiner has interpreted claim 24 as depending from claim 23.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 9, 11-14, 16-18, 20, 24, and 26 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by Glaeser et al. (U.S. Patent No. 10,309,881 B2), hereinafter Glaeser.
Regarding claim 1, Glaeser discloses a method comprising:
(a) providing an electron microscopy grid (FIG. 1A, step 105);
(b) depositing an aqueous suspension including an electron microscopy sample on the electron microscopy grid (FIG. 1A, step 110; column 4, lines 28-30);
(c) contacting an edge of the electron microscopy grid with an absorbent material (FIG. 1A, step 115; column 4, lines 44-46);
(d) allowing a thickness of the aqueous suspension to decrease over a period of time (FIG. 1A, steps 120-125); and
(e) freezing the aqueous suspension (FIG. 1A, step 130).
Regarding claim 3, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that operation (d) occurs via physical processes that do not require evaporation to occur (column 5, lines 10-16; the thickness of the aqueous suspension occurs due to the gradient of surface tension and blotting).
Regarding claim 9, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that operation (e) is performed by immersing the electron microscopy grid with the aqueous suspension disposed thereon in a cryogenic liquid (column 5, lines 65-67).
Regarding claim 11, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that a volume of the aqueous suspension deposited on the electron microscopy grid in operation (b) is about 3 microliters or less (column 4, lines 34-36).
Regarding claim 12, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that the absorbent material comprises filter paper (column 4, line 47).
Regarding claim 13, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that operation (e) is performed when the thickness of the aqueous suspension on the electron microscopy grid is about 20 nanometers to 200 nanometers (column 5, lines 51-64).
Regarding claim 14, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that operations (b), (c), and (d) are performed at a first temperature and a first relative humidity (column 6, lines 1-3).
Regarding claim 16, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that the aqueous suspension includes a surfactant (column 4, lines 57-58; column 13, line 43).
Regarding claim 17, Glaeser as applied to claim 1 discloses the method of claim 1.
In addition, Glaeser discloses that operations (c) (column 5, lines 6-16) and (d) are performed in an atmosphere that includes a surfactant (column 4, lines 57-58 and 65-66; surfactant vapor).
Regarding claim 18, Glaeser discloses an apparatus comprising:
a chamber (FIG. 1C, element 155), the chamber operable to be maintained at a first temperature and a first relative humidity (column 6, lines 33-34);
a grid holder (FIG. 1C, element 175), the grid holder operable to hold an electron microcopy grid (FIG. 1D, element 177);
an absorbent material holder (column 7, lines 4-5), the absorbent material holder operable to hold an absorbent material such that the absorbent material is in contact with an edge of the electron microscopy grid (column 7, lines 5-8); and
a reservoir (FIG. 1C, element 180), the reservoir operable to contain a cryogenic liquid (column 7, lines 27-28), the reservoir being positioned such that the electron microscopy grid can be immersed in the cryogenic liquid contained by the reservoir (column 7, lines 27-28).
Regarding claim 20, Glaeser as applied to claim 18 discloses the apparatus of claim 18.
In addition, Glaeser discloses a sample deposition device, wherein the sample deposition device is operable to deposit an aqueous suspension including an electron microscopy sample on a surface of the electron microscopy grid (column 6, lines 60-65).
Regarding claim 24, Glaeser as applied to claim 18 discloses the apparatus of claim 18.
In addition, Glaeser discloses that a relative humidity of the humid air is about 50% to 100% (column 6, lines 4-5).
Regarding claim 26, Glaeser as applied to claim 18 discloses the apparatus of claim 18.
In addition, Glaeser discloses that the first temperature is about 20 °C to 25 °C (column 6, lines 3-4), and wherein the first relative humidity is about 50% to 100% (column 6, lines 4-5).
Applicant has not disclosed that the claimed range of 20 °C to 25 °C is critical; the present application discloses a broader range of 4 °C to 37 °C, wherein the range of 20 °C to 25 °C is given as a particular example within the range (e.g., page 10, paragraph 0052). However, there is no disclosure that the range of 20 °C to 25 °C is critical or would have resulted in a difference in operation as compared to other temperatures within the broader range. Therefore, the range of 0 °C to 40 °C disclosed by Glaeser, while somewhat broader than the claimed range, anticipates the claim. See MPEP § 2131.03 II.
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Glaeser as applied to claim 1 above, in view of Wang (U.S. Patent Application Publication No. 2016/0351374 A1), hereinafter Wang.
Regarding claim 2, Glaeser as applied to claim 1 discloses the method of claim 1.
Glaeser fails to disclose that in operation (c), the edge of the electron microscopy grid does not include a region of the electron microscopy grid that is to be imaged in an electron microscope.
However, Wang discloses that in operation (c), the edge of the electron microscopy grid (FIG. 3A and paragraph 0054, lines 3-5: the edge 142 of the electron microscopy grid is contacted with an absorbent material) does not include a region of the electron microscopy grid that is to be imaged in an electron microscope (FIG. 4 and paragraph 0057: portions of chambers 140 are imaged through imaging apertures 150, which do not include edge portions 142 of chambers 140 as shown in FIG. 3A).
Therefore, 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 Glaeser to include that in operation (c), the edge of the electron microscopy grid does not include a region of the electron microscopy grid that is to be imaged in an electron microscope, based on the teachings of Wang that this provides greater control of ice thickness for improved contrast and resolution during imaging (Wang, paragraph 0025).
Claims 4-5, 7, and 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Glaeser as respectively applied to claims 1 and 18 above, in view of Lamers et al. (U.S. Patent Application Publication No. 2019/0170618 A1), hereinafter Lamers.
Regarding claim 4, Glaeser as applied to claim 1 discloses the method of claim 1.
Glaeser fails to disclose, prior to or during operation (d), directing a stream of air to a portion of a surface of the electron microscopy grid.
However, Lamers discloses, prior to or during operation (d) (paragraph 0139; FIG. 8b: the thickness of the aqueous suspension (element 70 in FIG. 8a) decreases), directing a stream of air to a portion of a surface of the electron microscopy grid (paragraph 0138; FIG. 8a, gas flow).
Therefore, 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 Glaeser to include, prior to or during operation (d), directing a stream of air to a portion of a surface of the electron microscopy grid, based on the teachings of Lamers that this step increases the likelihood of a portion of the grid having an optimal fluid thickness for imaging (Lamers, paragraph 0138).
Regarding claim 5, Glaeser in view of Lamers as applied to claim 4 discloses the method of claim 4.
In addition, Glaeser discloses that the absorbent material is in contact with the edge of the electron microscopy grid proximate a bottom of the electron microscopy grid (column 7, lines 1-4 and FIGs. 1C-1D: the absorbent material is inserted through ports 160, 162, or 167, which are all shown to be proximate a bottom of grid 177).
In addition, Lamers discloses that the portion of the surface of the electron microscopy grid to which the stream of air is directed is proximate a top of the electron microscopy grid (FIG. 5: gas nozzles 20 are directed towards the top of grid 80).
Therefore, 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 Glaeser in view of Lamers to include that the portion of the surface of the electron microscopy grid to which the stream of air is directed is proximate a top of the electron microscopy grid, based on the additional teachings of Lamers that this arrangement prevents interference between the gas nozzles and movement of the grid into a cryogenic reservoir (Lamers, paragraph 0130).
Regarding claim 7, Glaeser in view of Lamers as applied to claim 4 discloses the method of claim 4.
In addition, Lamers discloses that the air of the stream of air is humid air (paragraph 0149).
Therefore, 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 Glaeser in view of Lamers to include that the air of the stream of air is humid air, based on the additional teachings of Lamers that humidity in the stream of air improves control over sample fluid evaporation (Lamers, paragraph 0149).
Regarding claim 22, Glaeser as applied to claim 18 discloses the apparatus of claim 18.
Glaeser fails to disclose a nozzle, wherein the nozzle is positioned to direct a stream of air at a surface of the electron microscopy grid.
However, Lamers discloses a nozzle, wherein the nozzle is positioned to direct a stream of air at a surface of the electron microscopy grid (FIG. 5: gas nozzles 20 are directed towards the top of grid 80).
Therefore, 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 Glaeser to include a nozzle, wherein the nozzle is positioned to direct a stream of air at a surface of the electron microscopy grid, based on the teachings of Lamers that this arrangement prevents interference between the gas nozzles and movement of the grid into a cryogenic reservoir (Lamers, paragraph 0130).
Regarding claim 23, Glaeser as applied to claim 18 discloses the apparatus of claim 18.
Glaeser fails to disclose that the air of the stream of air is humid air.
However, Lamers discloses that the air of the stream of air is humid air (paragraph 0149).
Therefore, 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 Glaeser to include that the air of the stream of air is humid air, based on the teachings of Lamers that humidity in the stream of air improves control over sample fluid evaporation (Lamers, paragraph 0149).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lihl et al. (U.S. Patent Application Publication No. 2010/0181495 A1), hereinafter Lihl, teaches an apparatus comprising: a chamber, the chamber operable to be maintained at a first temperature and a first relative humidity; a grid holder, the grid holder operable to hold an electron microscopy grid; an absorbent material holder, the absorbent material holder operable to hold an absorbent material such that the absorbent material is in contact with an edge of the electron microscopy grid; and a reservoir, the reservoir operable to contain a cryogenic liquid, the reservoir being positioned such that the electron microscopy grid can be immersed in the cryogenic liquid contained by the reservoir.
Wang et al. (WO Patent No. 2020/041202 A1), hereinafter Wang (2020), teaches a method comprising directing a stream of air to a portion of a surface of an electron microscopy grid.
Carragher et al. (U.S. Patent Application Publication No. 2015/0090899 A1), hereinafter Carragher, teaches a method comprising: providing an electron microscopy grid; depositing an aqueous suspension including an electron microscopy sample on the electron microscopy grid; contacting an edge of the electron microscopy grid with an absorbent material; and allowing a thickness of the aqueous suspension to decrease over a period of time.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALINA R KALISZEWSKI whose telephone number is (703)756-5581. The examiner can normally be reached Monday - Friday 8:00am - 5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at (571)272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K./Examiner, Art Unit 2881
/ROBERT H KIM/Supervisory Patent Examiner, Art Unit 2881
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