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 .
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/856,142 in view of Seki et al. (US 2005/0202572) hereinafter Seki and Vogel et al. (US 2009/0153153 A1) hereafter Vogel. Regarding claim 1, Application claim 1 discloses all the limitation except for a table fixed to the sample stage and on which a sample is placed; and wherein the table has a protruding part protruding from the sample stage without overlapping the sample stage, and wherein at least the protruding part of the table is constituted by a material positioned at a more positive side in a triboelectric series than a material constituting the sample stage. Seki discloses a table [holder 3 composed of a nonmagnetic substance, ¶0033] fixed to the sample stage and on which a sample [living samples of container 2] is placed; wherein the table has a protruding part [holder 3 from support 20 as shown at fig. 4] protruding from the sample stage without overlapping the sample stage. Application claim 1 and Seki are silent about said at least the protruding part of the table is constituted by a material positioned at a more positive side in a triboelectric series than a material constituting the sample stage. Rather, Seki discloses table 3 composed of a nonmagnetic substance at ¶0033. Use of said nonmagnetic substances such as glass to hold the sample is old and well known in the art for optical clarity and thermal control during different processes. Also, the glass sits on positive side in a triboelectric series than the polyvinyl chloride (PVC). Vogel at fig. 3 discloses table 32/80 constituted by a material [a glass, see ¶0049] positioned at a more positive side in a triboelectric series than a material [silicone rubber seal (e.g., Sylgard), ¶0124] constituting the sample stage 78d . Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use material as taught by Vogel to modify the combination of Application claim 1 and Seki in order to obtain claim invention so modified combination has advantages that Vogel have to offer such as thermal tuning using glass and chemical resistance using silicon rubber seal (e.g., Sylgard). Claims 2-5 are similarly rejected (similar to rejection below) as they are obvious to claim 1 of copending Application No. 18/856,142 in view of Seki et al. (US 2005/0202572) and Vogel et al. (US 2009/0153153 A1).
This is a provisional nonstatutory double patenting rejection.
Claims 6-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/856,142 in view of Masuda et al. (US 2022/0157638 A1) hereafter Masuda. Regarding claim 1, Application claim 1 discloses all the limitations except for a table fixed to the sample stage and on which a sample is placed; and wherein both the sample stage and table are constituted by a material having a work function of 4 eV or less. Masuda at ¶0052 and ¶0057 discloses a table 74 fixed to the sample stage 60 and on which a sample 11 is placed; and the sample stage 60 and table 74 are constituted by a material [glass, also see Application claim 9] having a work function of 4 eV or less [work function of material, see ¶0052 and ¶0057]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use glass as taught by Masuda to modify Application claim 1, in order to obtain the claim invention and advantages that glass of Masuda have to offer. Claims 7-10 are similarly rejected (similar to rejection below) as they are obvious to claim 1 of copending Application No. 18/856,142 in view of Masuda et al. (US 2022/0157638 A1).
This is a provisional nonstatutory double patenting rejection.
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) 1-5 are is/are rejected under 35 U.S.C. 103 as being unpatentable over Seki et al. (US 2005/0202572) hereinafter Seki in view of Vogel et al. (US 2009/0153153 A1) hereafter Vogel.
Regarding claim 1, Seki at fig. 4 discloses a magnetic field detection system [¶0064-0070] comprising: a shield box 1 having a magnetic shield 1a-c surrounding a measurement space; a magnetic sensor 11 provided in the measurement space and fixed to the shield box; a sample stage 20 at least a part of which is inserted into the measurement space; a table [holder 3 composed of a nonmagnetic substance, ¶0033] fixed to the sample stage and on which a sample [living samples of container 2] is placed; and a drive mechanism 4 configured to change a position of the sample stage 3, wherein the table has a protruding part [holder 3 from support 20 as shown at fig. 4] protruding from the sample stage without overlapping the sample stage,
Seki is silent about said at least the protruding part of the table is constituted by a material positioned at a more positive side in a triboelectric series than a material constituting the sample stage. Rather discloses table 3 composed of a nonmagnetic substance at ¶0033. Use of said nonmagnetic substances such as glass to hold the sample is old and well known in the art for optical clarity and thermal control during different processes. Also, the glass sits on positive side in a triboelectric series than the polyvinyl chloride (PVC). Vogel at fig. 3 discloses table 32/80 constituted by a material [a glass, see ¶0049] positioned at a more positive side in a triboelectric series than a material [silicone rubber seal (e.g., Sylgard), ¶0124] constituting the sample stage 78d . Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use material as taught by Vogel to modify Seki in order to obtain claim invention so modified Seki has advantages that Vogel have to offer such as thermal tuning using glass and chemical resistance using silicon rubber seal (e.g., Sylgard).
Regarding claim 2, modified Saki discloses the magnetic field detection system as claimed in claim 1, wherein at least the protruding part of the table is constituted by a material [see glass as taught by Vogel above and also applicant’s claim 4] having a work function of 4 eV or less.
Regarding claim 3, modified Saki discloses the magnetic field detection system as claimed in claim 1, wherein at least the protruding part of the table is constituted by a material [see glass as taught by Vogel above and also applicant’s claim 4] positioned at a more positive side in the triboelectric series than aluminum.
Regarding claim 4, modified Saki discloses the magnetic field detection system as claimed in claim 1, wherein at least the protruding part of the table is constituted by glass [see glass as taught by Vogel above].
Regarding claim 5, modified Saki discloses the magnetic field detection system as claimed in claim 4. Modified Saki is silent about said at least the protruding part of the table includes two transparent glass plates, and wherein the sample is sandwiched between the two glass plates. This limitation is not inventive in view of modified Saki because holding the sample, sandwiched between the two glass plates is old and well known in the art for many reasons including holding the sample firmly to stop drifting or shaking due to any movement from the stage. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date modified Saki to include two transparent glass plates for sandwiching the sample to obtain claim invention and advantages such as to obtain uniform focal plane for clear imaging.
Claim(s) 6-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seki et al. (US 2005/0202572) hereinafter Seki in view of Masuda et al. (US 2022/0157638 A1) hereafter Masuda.
Regarding claim 6, Seki at fig. 4 discloses a magnetic field detection system comprising: a shield box 1 having a magnetic shield 1a-c surrounding a measurement space; a magnetic sensor 11 provided in the measurement space and fixed to the shield box; a sample stage 20 at least a part of which is inserted into the measurement space; a table [holder 3 composed of a nonmagnetic substance, ¶0033] fixed to the sample stage 20 and on which a sample is placed; and a drive mechanism 4 configured to change a position of the sample stage,
Seki is silent about wherein both the sample stage and table are constituted by a material having a work function of 4 eV or less. Masuda at ¶0052 and ¶0057 discloses the sample stage 60 and table 74 are constituted by a material [glass, also see Application claim 9] having a work function of 4 eV or less [work function of material, see ¶0052 and ¶0057]. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to use glass as taught by Masuda to modify Seki, in order to obtain claim invention and advantages that glass of Masuda have to offer.
Regarding claim 7, modified Seki discloses the magnetic field detection system as claimed in claim 6, wherein both the sample stage and table are constituted by a material [glass as taught by Masuda] positioned at a more positive side in a triboelectric series than aluminum.
Regarding claim 8, modified Seki discloses the magnetic field detection system as claimed in claim 6, wherein the table is constituted by a material [glass as taught by Masuda at ¶0052 and ¶0057] positioned at a more positive side in a triboelectric series than a material constituting the sample stage.
Regarding claim 9, modified Seki discloses the magnetic field detection system as claimed in claim 6, wherein the table is constituted by glass [glass as taught by Masuda].
Regarding claim 10, modified Seki, particularly Masuda at ¶0064 discloses the magnetic field detection system as claimed in claim 9, wherein the table includes two transparent glass plates [74, 78, ¶0060], and wherein the sample 11 is sandwiched between the two glass plates.
Please note: Examiner has cited particular columns, line numbers, and figures in the references as applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teaching of the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicants are reminded that MPEP 2141.02 states: A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. V. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Conclusion
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/PARESH PATEL/Primary Examiner, Art Unit 2858
September 1, 2026
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