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 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, 15 and 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kohara et al (US 2007/0207064).
As to claim 1, Kohara teaches a method (method shown in fig.1 and 8), comprising:
contacting a liquid sample with a collection aperture of a sample collection annulus to collect a film of the liquid sample within the collection aperture (collecting liquid sample film 111 with annular droplet holder 101 and/or 401 having annular opening, as best seen in fig.1 and 8, par.40-44); and
inserting the sample collection annulus with the collected film of the liquid sample into a tubular container through an opening thereof (inserting the annular droplet holder 101/401 with collected film into sample container 406, wherein to have a droplet formed on the droplet holder, the method of the second embodiment may be used, or the method of the first embodiment in which liquid is placed on a droplet holder using a liquid supply means may be used, par.44, fig.8)(Examiner respectfully notes that using the first embodiment in fig.1-5C, which encompasses holder 101 holding film 111, and using the second embodiment in fig.6-8, par.42-44, which encompasses holder 401, so holder 101 having sample film 111 can also be inserted into test tube 406).
As to claim 15, Kohara teaches the method, wherein the collection aperture has an area of between about 2 mm² and 10 mm², e.g., an area of about 4 mm², an area of about 5 mm², an area of about 6 mm², an area of about 7 mm², or an area of about 8 mm² (the droplet holder has a circular shape with diameter (inscribed diameter) of about 2.7 mm or 3.2mm, par.35).
As to claim 16, Kohara teaches the method, wherein the collection aperture has a volume of between about 4 µl and 20 µl, between about 5 µl and 18 µl, between about 7 µl and 16 µl, e.g., about 8 µl, about 10 µl, or about 12 µl (droplet holder is capable of holding a droplet ranging in volume from 10 nanoliters to several hundred microliters, par.35).
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.
Claim(s) 14 and 29 is/are rejected under 35 U.S.C. 103 as being obvious over Kohara et al (US 2007/0207064).
As to claims 14 and 29, Kohara teaches the invention substantially as claimed above, but failed to explicitly teach the collection aperture is triangular, and wherein the sample collection annulus defines opposed upper and lower faces and comprises a sidewall having a maximum thickness of between about 0.3 mm and about 0.8 mm and tapering to a reduced thickness of between about 0.05 mm and about 0.4 mm adjacent the lower face.
However, at the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art at the time the invention was made to design droplet holder aperture in a triangular shape and having sidewall having a maximum thickness of between about 0.3 mm and about 0.8 mm and tapering to a reduced thickness of between about 0.05 mm and about 0.4 mm adjacent the lower face because the Applicant has not disclosed that the triangular shape and the specific dimensions provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected the droplet holder opening shape taught by Kohara’s invention and the Applicant’s invention, to perform equally well with either the circular shape taught by Kohara’s invention or the claimed triangular opening shape and specific dimensions in claims 14 and 29 because both droplet holder/annulus collector would perform the same function of collecting liquid sample film.
Allowable Subject Matter
Claims 2, 4, 6, 8-9, 12, 18-21 and 30-35 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.
Response to Arguments
Applicant’s arguments field on 08/17/2026 with respect to claim objections, 112 rejections have been fully considered and are persuasive. The claim objections, 112 rejections have been withdrawn.
Applicant's arguments regarding Kohara's holder 401 is a spiral shape- memory-alloy holder, not the annular holder 101 that forms film 111 that is being inserted into test tube have been fully considered but they are not persuasive, because the claimed limitation “inserting the sample collection annulus with the collected film of the liquid sample into a tubular container through an opening thereof” can be interpreted as just initially inserting the annulus with the collected film through the opening of the container and does not necessarily mean immersing the annulus with the collected film deep inside the container, and also does not necessarily mean the collected film stays in the film form all the time the annulus is inside the container, as alleged by the Applicant (see arguments page 7).
Since Kohara’s invention teaches to have a droplet formed on the droplet holder, the method of the second embodiment may be used, or the method of the first embodiment in which liquid is placed on a droplet holder using a liquid supply means may be used (par.44, fig.8), wherein using the first embodiment in fig.1-5C encompasses holder 101 holding film 111 being inserted in container 406, as well as holder 401, even if the initial collected fluid film in holders 101/401 is transformed into a droplet later, still holders 101/401 are initially inserted in the container holding a film then creating/forming the spherical droplet (par.40-44). So it can be fairly interpreted that Kohara’s invention teaches the claimed limitation “inserting the sample collection annulus with the collected film of the liquid sample into a tubular container through an opening thereof”.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAY A ABOUELELA whose telephone number is (571)270-7917. The examiner can normally be reached 8-5.
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/MAY A ABOUELELA/Primary Examiner, Art Unit 3791
