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
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed steps, the process steps listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claim 15, the Examiner notes that the phrase “further comprising staining the tissue is stained after an overnight period” is oddly phrased and should be amended for clarity. Additionally, the claimed “overnight period” is unclear as the Examiner is unable to determine if actual nighttime is required prior to staining, or if the claim intends to recite a period of time after applying the electric field at which staining can occur.
Claims 17 and 20 are duplicates as they both depend from claim 12, and are identical in that both claims recite “wherein the tissue contains residua; paraffin after the electric field is applied.”
For claim 26, the phrase “drying out” is unclear as the Examiner is unable to determine the metes and bounds of the phrase in question. What Applicant regards as “drying out” may not be considered as such by a user different than Applicant, thus the metes of “drying out” cannot be ascertained.
Claim Objections
Claim 17 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 20. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 15 and 26 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.
For claim 15, the Examiner notes that the phrase “further comprising staining the tissue is stained after an overnight period” is oddly phrased and should be amended for clarity. Additionally, the claimed “overnight period” is unclear as the Examiner is unable to determine if actual nighttime is required prior to staining, or if the claim intends to recite a period of time after applying the electric field at which staining can occur.
Claim 15 recites the limitation "the electric field" in line 3. There is insufficient antecedent basis for this limitation in the claim.
For claim 26, the phrase “drying out” is unclear as the Examiner is unable to determine the metes and bounds of the phrase in question. What Applicant regards as “drying out” may not be considered as such by a user different than Applicant, thus the metes of “drying out” cannot be ascertained.
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 12-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 11, and 12 of U.S. Patent No. 11,525,759. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader in scope, and encompass all the limitations of claims 1, 2, 11, and 12 of US’759.
Independent claim 12 of the instant application recites a method for preparing a tissue comprising providing a tissue embedded with paraffin, generating an electric field, applying the electric field to the tissue to remove at least some paraffin from the tissue, and adding a wetting agent to the tissue. Similarly, independent claim 25 of the instant application recites a method for preparing a tissue comprising providing a tissue embedded with paraffin wax, applying an electric field to the tissue wherein the electric field removes some of the paraffin from the tissue, and wherein the tissue contains residual paraffin after the electric field is applied.
Independent claim 1 of US’759 recites a method for preparing a tissue comprising providing a tissue embedded with paraffin, generating an electric field to produce plasma and direct charged species of the plasma to the paraffin, applying the electric field to the tissue to remove at least some of the paraffin from the tissue by electrostatic force, and applying a wetting agent to the tissue. Claims 12 and 25 of the instant application are broader in scope in that they do not explicitly state an electric field producing plasma, directed charged species of plasma to the paraffin, and removing paraffin from the tissue by electrostatic force, thus the claims are broader in scope compared to US’759. One would expect the electric field recited in claims 12 and 25 of the instant application to produce a plasma and that a charged species of the plasma is utilized to remove paraffin from the tissue, thus claims 12 and 25 of the instant application encompasses all the limitations of claim 1 of US’759.
Claims 12-31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,050,163. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader in scope, and encompass all the limitations of claims 1-15 of US’163.
Independent claim 12 of the instant application recites a method for preparing a tissue comprising providing a tissue embedded with paraffin, generating an electric field, applying the electric field to the tissue to remove at least some paraffin from the tissue, and adding a wetting agent to the tissue. Similarly, independent claim 25 of the instant application recites a method for preparing a tissue comprising providing a tissue embedded with paraffin wax, applying an electric field to the tissue wherein the electric field removes some of the paraffin from the tissue, and wherein the tissue contains residual paraffin after the electric field is applied.
Independent claim 1 of US’163 recites a method for preparing a tissue comprising providing a tissue embedded with paraffin, generating an electric field to produce plasma and direct charged species of the plasma to the paraffin, applying the electric field to the tissue to remove at least some of the paraffin from the tissue by electrostatic force, and applying a wetting agent to the tissue. Claims 12 and 25 of the instant application are broader in scope in that they do not explicitly state an electric field producing plasma, directed charged species of plasma to the paraffin, and removing paraffin from the tissue by electrostatic force, thus the claims are broader in scope compared to US’163. One would expect the electric field recited in claims 12 and 25 of the instant application to produce a plasma and that a charged species of the plasma is utilized to remove paraffin from the tissue, thus claims 12 and 25 of the instant application encompasses all the limitations of claim 1 of US’759. Additionally, the Examiner notes that claims 2 and 4-15 are nearly identical to claims 13-24 and 26-31 of US’163.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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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.
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/DWAN A GERIDO/ Examiner, Art Unit 1797 /LYLE ALEXANDER/ Supervisory Patent Examiner, Art Unit 1797
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