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 Objections
Claim 1 is objected to because of the following informalities: the recitation of “a filing box” in line 8 and line 24 is suggested to change to - - the filing box - -. The recitation of “base 2” in line 6 is suggested to change to - - base (2) - -.
Appropriate corrections are 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 1-10 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 recitations of “two-way translation” and “two-way rotation” in lines 12-14 are vague because they are unclear what is the literal meaning of the term “two-way”, namely whether the “two-way translation” means allow the saddle to translate back and forth on a single translation line or on two different lines, and whether the “two-way rotation” means allow the head to rotate clockwise and counterclockwise in a same plane or in different planes. Moreover, the recitations of “first reader” in line 15 and “laser pointer” in line 17 are vague because it is unclear of the positions and their structural relationships with respect to other components of the device so as to provide a needed synergistic effect.
The dependent claims 2-10 are also rejected because they are, directly or indirectly, depending from rejected claim 1.
Claim Interpretation
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.
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.
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.
Claim(s) 1, 2, 4 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Neef et al. (US 2018/0003600, cited by applicant) in view of Favuzzi et al. (US 2005/0064535).
Regarding claim 1, Neef teaches device (1, fig. 2 and [0074]) adapted to retrieve histological samples and/or biocassettes previously positioned in an orderly fashion in rows and/or columns in a filing box (6, fig. 3) by means of a centralized electronic filing system, characterized in that it comprises ([0069]):- a load-bearing structure (back, right and left sides of the apparatus 1, fig. 2);- a base (bottom side of the apparatus 1, fig. 2) for resting on work surfaces for said load-bearing structure comprising reversible blocking means of the filing box (6) for different treatment agents and/or biocassettes ([0074]), where said filing box and/or biocassettes comprise automatically readable identification codes ([0061] and [0076]);- a saddle (7, fig. 3) associated with said load-bearing structure by means of two-way translation means ([0078]);- a head (7 which also includes a head, fig. 3) associated with said saddle (4) by means of two-way rotation means ([0078]);- a first reader (3, fig. 2) adapted to automatically acquire said identification code of the filing box ([0075] and [0076]);- a laser pointer (15, fig. 6) adapted to emit a light beam ([0052]);- an interface device (5, fig. 2), comprising hardware and/or software means (18, fig. 2) adapted to manage translation of said saddle and rotation of said head ([0071]-[0080]), where the interface device is adapted to coact with the first automatic code reader and with the centralized electronic filing system to identify the positions occupied by the slides and/or by the biocassettes inside the filing box arranged on the base of the device and to operate the laser pointer to emit the light beam adapted to visually indicate the position occupied by one of said slides and/or of said biocassettes to be retrieved from inside said filing box ([0053] and [0071]-[0080]).
Neef fails to teach histological slides and wherein the slides comprise automatically readable identification code.
However, Favuzzi teaches method and apparatus (fig. 1) for pretreatment of tissue slides comprising: a load-bearing structure (4, [0035]); a base for resting on work surfaces for the loading-bearing structure comprising reversible blocking means of the filing box (6, [0035]) of slides (7, [0035]) and/or biocassettes, where the filing box and the slides and/or biocassette comprise automatically readable identification codes ([0037]); a saddle (20) associated with the loading-bearing structure by means of two-way translation means; a head (22) associated with the saddle by means of two-way rotation means; a first reader (25) adapted to automatically acquire the identification code of the filing box ([0037]).
In view of Favuzzi’s teaching, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Neef by incorporating the teaching as taught by Favuzzi in order to arrive at the claimed invention.
Regarding claim 2, Neef as modified by Favuzzi teaches all subject matter claimed as applied above. Neef and Favuzzi further teach said load-bearing structure comprises a bridge structure (the back side of device 1), comprising a central section (Neef: section having display 5. Favuzzi: section that connects left and right side of frame 4), extending horizontally, placed between a top of a first (right side) and a top of a second (left side) lateral section, extending vertically (Neef: fig. 2. Favuzzi: fig. 1).
Regarding claim 4, Neef as modified by Neef as modified by Favuzzi teaches all subject matter claimed as applied above except for the head comprises the first reader and the laser pointer. However, Favuzzi teaches the head 22 comprises the reader 25 (fig. 1 and [0037]). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Neef to reposition the reader and the laser on the head of the saddle as taught by Favuzzi since it is just a matter of repositioning or rearranging the reader and the laser within the apparatus. Moreover, it has been decided that a mere rearrangement of parts is an obvious expedient over a prior art. See M.P.E.P. 2144.01 (VI)(C). Regarding claim 10, Neef as modified by Favuzzi teaches all subject matter claimed as applied above. Neef further teaches the central section of the bridge structure comprises visual indicator means (4) of operating conditions of the device (fig. 2).
Allowable Subject Matter
Claims 3 and 5-9 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, taken alone or in combination, fails to further teach or suggest the arrangements as recited in claims 3 and 5-9.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
References: Zuo et al. (US 2024/0094235); Lu (CN 107803796A); Miller (WO 2014/031576A1); McKeen et al. (CA 2842680); Walsh et al. (US 2012/0156716) and Williamson (WO 2010/078240A1) are cited because they are related to treatment apparatus for histological samples.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tuyen Kim Vo whose telephone number is (571)270-1657. The examiner can normally be reached Mon-Thurs: 8AM-6:30PM.
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/TUYEN K VO/Primary Examiner, Art Unit 2876
