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 .
Response to Pre-amendment
2. The present office action is made in response to the Pre-amendment filed on 04/29/2024. It is noted that in the Pre-amendment, applicant has made changes to the specification and the claims. There is not any change to be made to the abstract and the drawings.
A) Regarding to the specification, applicant has made changed to the title, and added a new paragraph thereof “CROSS-REFERENCE TO RELATED APPLICATIONS” to page 1 of the specification; and
B) Regarding to the claims, applicant has amended claims 3-4 and 6-7. There is not any claim being added/canceled into/from the application. The pending claims are claims 1-7 which claims are subjected to an Election/Restriction.
Election/Restrictions
3. In response to the Election/Restriction mailed to applicant on 02/25/2026, applicant has made an election of Invention I in the reply of 04/24/2026.
4. As a result of applicant’s election, claims 1-5 are examined in the present office action, and claims 6-7 have been withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention.
Applicant should note that the non-elected claims 6-7 will be rejoined if the linking claim 1 is later found as an allowable claim.
Priority
5. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
6. The drawings contain five sheets of figures 1-6 were received on 04/29/2024. These drawings are approved by the examiner.
Specification
7. The lengthy specification which was amended by the Pre-amendment of 04/29/2024 has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Interpretation
8. 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.
9. 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:
(A) the 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.
10. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Such claim limitations are:
“a dipping bath arrangement part”, “an imaging device” and “a notification unit” as recited in present claim 1; and
“an image processing device” as recited in each of claims 2-4.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
11. 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.
12. Claims 1-5 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for the following reasons.
a) Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the presence/absence” (line 6) and “the condition” (line 7) lacks a proper antecedent basis.
b) Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the presence/absence” (lines 4-5) and “the presence/absence” (line 5) lacks a proper antecedent basis.
c) Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because the feature thereof “the presence/absence” (line 4) lacks a proper antecedent basis.
d) Claim 5 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite because each of the features thereof “the difference” (lines 2-3) and “the number” (line 3) lacks a proper antecedent basis.
e) The remaining claim(s) is/are dependent upon a rejected base claim and thus inherit(s) the deficiencies thereof.
Claim Rejections - 35 USC § 102
13. 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.
14. 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.
15. Claim 1, as best as understood, is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Takizawa et al (US Publication No. 2009/0098646, submitted by applicant).
Takizawa et al discloses a staining and sticking system.
Regarding present claim 1, the system as described in paragraphs [0063]-[0090] and shown in figs. 1 and 5-9 comprises the following features;
a) a dipping bath (26) in which a clearing agent is stored and a basket (20) for housing a plurality of slide glasses (25) to which specimens are attached/mounted;
b) a dipping bath arrangement part (28) in which the dipping bath (26) is arranged;
c) a sensing device (46a, 46b) provided in the dipping bath arrangement part (28) for sensing a presence/absence of the dipping bath (26) and a condition of the dipping bath (26) in the dipping bath arrangement part (28); and
d) a notification unit (12A) notifying an operator of the presence/absence of the dipping bath and the condition of the dipping bath in the dipping bath arrangement part taken by the sensing device, see paragraphs [0051]-[0052].
It is noted that the claim does not recite any specific limitation regarding a structure of the so-called “notification unit” and “an operator”, and the sticking control unit (12A) as provided by Takizawa et al in paragraphs [0051]-[0052] comprises a memory and a CPU wherein the sticking condition data stored in the memory and signals from the sensing device are in operating connections to the memory and the CPU to drive the sticking device (12) on the basis of the sticking condition data, which are related to each of the baskets.
Since absence of any feature regarding to the notification unit and the operator and a feature recited in a claim is given a board interpretation then the CPU is considered as “an operator” and the memory stored data and outputs from the sensing system for outputting signal to the sticking device (12) is considered as “a notification unit”.
Claim Rejections - 35 USC § 103
16. 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.
17. Claims 2-5, as best as understood, are rejected under 35 U.S.C. 103 as being unpatentable over Takizawa et al (US Publication No. 2009/0098646) in view of Egle et al (US Publication No. 2010/0099199) (submitted by applicant).
a) Regarding present claims 4-5, it is noted that while Takizawa et al discloses a sensing device (46a, 46b) for sensing a presence/absence of the dipping bath (26) and a condition of the dipping bath (26) in the dipping bath arrangement part (28) and a processing device having memory and CPU; however, Takizawa et al does not positively disclose that the sensing device is an imaging device and the processing device having memory and CPU is an imaging processing device for performing image processing of an image taken by the imaging device.
However, a notification unit in the form of an imaging device having a sensing device and a processing device for performing image processing of an image taken by the imaging device is known to one skilled in the art as can be seen in the device provided by Egle et al. In particular, in paragraphs [0028]-[0029] and [0043]-[0044] and figs. 2 and 4, Edge et al discloses a notification/evaluation device comprises an optical sensor (5) and a computer (6) connected to the optical sensor (5) via data line (7). With that teaching then the optical sensor takes the image of the slide magazines (2) with respect to the treatment stations (3) and the computer performs image processing.
Thus, it would have been obvious to one skilled in the art before the effective filing date of the invention to modify the staining and sticking system as provided by Takizawa et al by using a sensing system having an optical sensor and a computer wherein the optical sensor takes images of the slide magazines/baskets contained the slides and the computer performs image processing based on the image taken by the optical sensor as suggested by Egle et al to meet a particular application.
It is noted that a detection/sense of a type of a size of the basket is disclosed by Takizawa et al as can be seen in paragraphs [0068]-[0075].
b) Regarding present claims 2-3, it would have been obvious to one skilled in the art to modify the combined product provided by Takizawa et al and Egle et al by setting some instructions in the processing system to detect/sense other conditions of the present/absence of the basket such as an operation of its lid and/or the volume of agent put inside the dipping bath, etc … to serve other observations required by an operator/observer.
Conclusion
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to THONG Q NGUYEN whose telephone number is (571) 272-2316. The examiner can normally be reached M - Th: 6:00 ~ 17:00.
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, STEPHONE B. ALLEN can be reached at (571) 272-2434. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THONG Q NGUYEN/Primary Examiner, Art Unit 2872
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