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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/25/25 has been entered.
Claim Status
Claims 1-5 are pending and are examined. Claims 6-15 are withdrawn and are not examined.
Claim Objections
Claim 1 is objected to because of the following informalities: In line 20, “are” should be “area”. Appropriate correction is required.
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 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 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.
Regarding Claim 1, the limitation in lines 13-21 “one or more sample chambers selected from: (i) a first sample chamber… (ii) a second sample chamber… wherein the first seating area of the intermediate portion of the sample carrier is… configured to engage the second opening of the second sample chamber” is unclear and indefinite. In this limitation, the arrangement is defined by both the first sample chamber and the second sample chamber. However, the prior limitation in (b) states “one or more sample chambers selected from” which means both sample chambers are not required. Therefore, it is unclear what Applicant intends to be structurally present in the claimed invention. Are one or two sample chambers required? Please clarify.
Claims 2-5 are rejected by virtue of being dependent on a rejected base claim.
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.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Baer (US Pub 2002/001837), in view of Baer (US Patent 5,985,085).
Regarding Claim 1, Baer teaches a system for a biological process (FIGS. 1-3), comprising:
a sample carrier (carrier 12), comprising:
a cap formed from a substrate with an upper portion of the substrate comprising an outer perimeter (cap is where 12 is),
a first shoulder (shoulder 24), and the top surface (top surface 22);
a lower portion of the substrate, wherein the lower portion comprises a second seating area with a second diameter (lower portion 20); and
a bottom surface (substrate surface 26);
wherein a sample transfer film is applied to the bottom surface of the cap (transfer film 28),
(b) one or more sample chambers selected from: (i) a first sample chamber comprising a first opening characterized by a first opening diameter, (ii) a second sample chamber comprising a second opening characterized by a second opening diameter that is less than the first opening diameter ([0062] The carrier-receiving portion 42 further includes a landing portion 66 having a landing surface 68. As shown in FIGS. 4, 6, and 8, the landing portion 66 extends above the shoulder 52. The landing portion 66 is raised above the shoulder 52 to generate a force response upon the inserted carrier 12 such that the carrier 12 is retained in a compression-fit within the extraction device 14); and
wherein the cap is either disengaged from both the first sample chamber and the second sample chamber, or the cap is engaged with the first sample chamber, or the cap is engaged with the second sample chamber (The cap would be capable of being disengaged from both sample chambers or engaged with either the first sample chamber or second sample chamber. See Fig. 11D).
Baer ‘837 is silent to an intermediate portion of the substrate, wherein the intermediate portion comprises a first seating area with a first diameter and a second shoulder; wherein the outer perimeter of the upper portion is larger than the first diameter of the first seating area of the intermediate portion, and wherein the first diameter is larger than the second diameter of the second seating area of the lower portion, wherein the first seating area of the intermediate portion of the sample carrier is configured to engage the first opening of the first sample chamber and the second seating area of the lower portion of the sample carrier is configured to engage the second opening of the second sample chamber.
Baer ‘085 teaches, in FIGS. 3A-3D, a sample carrier 300. The sample carrier 300 has an upper portion 310 and a lower portion 320. The upper portion 310 includes a top surface 315 and an outer perimeter 317, and a shoulder 319. The lower portion 320 includes a flare 322 (first seating area of the intermediate portion), an inner perimeter 324, a taper 326 (second seating area) and a substrate surface 328.
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 added an intermediate portion of the substrate, wherein the intermediate portion comprises a first seating area with a first diameter and a second shoulder; wherein the outer perimeter of the upper portion is larger than the first diameter of the first seating area of the intermediate portion, and wherein the first diameter is larger than the second diameter of the second seating area of the lower portion; and wherein the intermediate portion of the sample carrier is configured to engage the first sample chamber and the lower portion of the sample carrier is configured to engage the second sample chamber, as taught by Baer ‘085, to the device of Baer ’837, to allow for a tight fit for forming a cap for a reservoir, as taught by Baer ‘085 in the Abstract.
Regarding Claim 2, modified Baer teaches the system of claim 1, wherein the first sample chamber has a total capacity of 0.5 milliliters (With the carrier 12 in contact with the landing portion 156, a reservoir 170 having a volume of approximately 0.01 to 250 µL is formed. The small reservoir 170 is advantageous for a several reasons. For example, for single cell extractions, the small volume aids in obtaining the right dilution factor. Another advantage is realized in the form of cost savings as a result of using smaller volumes of buffer and other fluids for extraction.).
Regarding Claim 3, modified Baer teaches the system of claim 1, wherein the second sample chamber has a total capacity of 0.2 milliliters (With the carrier 12 in contact with the landing portion 156, a reservoir 170 having a volume of approximately 0.01 to 250 µL is formed. The small reservoir 170 is advantageous for a several reasons. For example, for single cell extractions, the small volume aids in obtaining the right dilution factor. Another advantage is realized in the form of cost savings as a result of using smaller volumes of buffer and other fluids for extraction.).
Regarding Claim 4, modified Baer teaches the system of claim 1, wherein the intermediate portion of the sample carrier comprises a first seating area with a first diameter configured to provide an interference fit within the first sample chamber opening (the examiner notes that the limitation beginning with “configured to” is directed to a capability. The first seating area is capable of providing an interference fit within the first sample chamber opening).
Regarding Claim 5, modified Baer teaches the system of claim 1, wherein the lower portion of the sample carrier comprises a second seating area with a second diameter configured to provide an interference fit within the second sample chamber opening (the examiner notes that the limitation beginning with “configured to” is directed to a capability. The second seating area is capable of providing an interference fit within the first sample chamber opening).
Response to Arguments
Applicant’s arguments, see pages 5 and 6, filed 11/25/25, with respect to the 112b rejection have been fully considered and are persuasive. The 112b rejection of claims 1-5 has been withdrawn.
However, the examiner notes that a new 112b rejection is applied in light of the amendment.
Applicant's arguments, see pages 6-8, filed 11/25/25 regarding the 103 rejection have been fully considered but they are not persuasive.
First, Applicant argues that the prior art of Baer is silent to an intermediate portion of the substrate.
In response, the examiner notes the intermediate portion is directed to a section and not a particular structure. One of ordinary skill in the art could point to any portion between the top and bottom as an intermediate portion. The prior art of Baer ‘085 teaches, in FIGS. 3A-3D, a sample carrier 300. The sample carrier 300 has an upper portion 310 and a lower portion 320. The upper portion 310 includes a top surface 315 and an outer perimeter 317, and a shoulder 319. The lower portion 320 includes a flare 322 (first seating area of the intermediate portion), an inner perimeter 324, a taper 326 (second seating area of the intermediate portion) and a substrate surface 328. Therefore, the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACQUELINE BRAZIN whose telephone number is (571)270-1457. The examiner can normally be reached M-F 8-6.
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/JB/
/JILL A WARDEN/Supervisory Patent Examiner, Art Unit 1798