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 .
Response to Arguments
Applicant’s arguments, filed 03/18/26, with respect to the rejection of claims under Double Patenting have been fully considered and they are persuasive. Applicant submitted a proper Terminal Disclaimer in response to the Double Patenting rejection set forth in Paragraphs 2-3 of the Non-Final Rejection mailed 12/18/25. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below.
Applicant’s arguments, filed 03/18/26, with respect to the rejection of claims 7-20 under 35 U.S.C. 112(b) Patenting have been fully considered and they are persuasive. Applicant has amended the claims to address the issues set forth in Paragraphs 4-7 of the Non-Final Rejection mailed 12/18/2025. See also page 5 of Applicant’s remarks. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below.
Applicant’s arguments, filed 03/18/26, with respect to the rejection of claims under 35 U.S.C. 103 as being unpatentable over Nordberg et al. (US 2015/0056695) in view of have been fully considered and they are partially persuasive. Applicant has amended claim 1 to include a mark in the upper surface and argued this feature is not taught or suggested by the cited prior art Nordberg or Gibbs. The Examiner agrees. Therefore, the 103 rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made below. Applicant has also amended claim 9 to remove the sample tube holder element. The Examiner submits this amendment has resulted in a broader claim 9 than previously recited. Upon further consideration, the 103 rejection has been withdrawn for a new 102 rejection which is made below.
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 4 and 8 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. Claim 4 and 8 refer back to claim 1 in the preamble, but contain limitations directed to the sample tube holder – which is not recited until claim 2 – in the body of the claim. The Examiner suggests amending the claims to recite “claim 2”. The Examiner has treated these claims as dependent upon claim 2 for examination purposes.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 5, 9, 16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Drury et al. (US 4,516,522).
Regarding claims 1, 5 and 9 – Drury teaches a device for preparing a fluid sample on a slide (abstract), comprising: a support surface (a base 12 including feet members 46 and 48 on sides 36 and 38; Fig. 1; Col. 3, lines 10-12); an upper surface opposite the support surface (a surface 18 opposite the feet; Fig. 1; Col. 2, lines 31-34), the upper surface comprising: a slide channel extending from a first end of the upper surface to a stop adjacent to a second end of the upper surface (a channel formed by a pair of elongate side rails 32 and 34 extending between two pairs of posts 20 and 22 on a first and second side respectively; Fig. 1; Col. 2, lines 42-51); a fiducial mark disposed in the slide channel, the fiducial marker located a defined distance from the stop for placing the solution to be spread (an indicator 40 located equidistant between the rails 32 and 34 and adjacent an indentation 30 a defined distance from the posts 22; Fig. 1; Col. 2, lines. 53-59); and a support bar extending across the slide channel (a spreader 16 extending between the guide rails 32 and 34; Figs. 1, 3; Col. 3, lines. 62-63).
Regarding claim 16 – Drury discloses a cavity (indentations 28 or 30) in the frame (base 12) in Figure 1 and column 2, lines 56-60.
Regarding claim 19 – Figure 1 of Drury shows a bottom frame portion (sides 36 and 38) that are wider than the channel portion (18) of the frame (base 12).
Claims 9, 11, 13, 16 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nordberg et al. (US 2015/0056695). Nordberg teaches a slide preparation apparatus and method for spreading a fluid across a substrate. The embodiments of the apparatus most relevant to the instant claims are shown in Figures 4A, 4B and 5; and described in Paragraphs 0021-0032 and 0038.
Regarding claim 9 – As shown in Figure 5, Nordberg teaches a slide preparation apparatus (spreader 500) comprising a base (frame 504) having an upper surface with a slide channel (formed from a stanchion 542, and first and second sides 544), the slide channel extending along the upper surface from a first end of the upper surface to a stop adjacent to a second end of the upper surface (a shelf 550 on each side extending from a first end of the spreader 500 to a stop located above a cavity 562) and having a width corresponding to a width of a slide, and a support bar (wiper 502) extending across and slightly above the slide channel, the support bar including a notch (bore 538). See also Paragraphs 0028-0032.
Regarding claims 11 and 13 – Nordberg teaches a cylindrically shaped sample tube holder (606) in Figure 6 and .
Regarding claim 16 – Nordberg discloses a cavity (562) in the frame (504) in Figure 5 and Paragraph 0031.
Regarding claim 19 – Nordberg teaches a wide bottom portion (base 560) of the frame (504) that is wider than the slide channel in Figure 5 and Paragraph 0031.
Inventorship
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Nordberg et al. (US 2015/0056695) in view of Drury et al. (US 4,516,522). As noted above, Nordberg teaches a slide preparation apparatus and method for spreading a fluid across a substrate. The embodiments of the apparatus most relevant to the instant claims are shown in Figures 4A, 4B and 5; and described in Paragraphs 0021-0032 and 0038. As shown in Figure 5, Nordberg teaches a slide preparation apparatus (spreader 500) comprising a base (frame 504) having an upper surface with a slide channel (formed from a stanchion 542, and first and second sides 544), the slide channel extending along the upper surface from a first end of the upper surface to a stop adjacent to a second end of the upper surface (a shelf 550 on each side extending from a first end of the spreader 500 to a stop located above a cavity 562) and having a width corresponding to a width of a slide, and a support bar (wiper 502) extending across and slightly above the slide channel, the support bar including a notch (bore 538). The support bar further includes a sample tube holder (606) affixed to the support bar of the slide preparation apparatus. See also Paragraphs 0028-0032. Nordberg does not teach a reference mark in the upper surface as recited in the instant claims.
Drury teaches a device for preparing a fluid sample on a slide (abstract), comprising: a support surface (a base 12 including feet members 46 and 48 on sides 36 and 38; Fig. 1; Col. 3, lines 10-12); an upper surface opposite the support surface (a surface 18 opposite the feet; Fig. 1; Col. 2, lines 31-34), the upper surface comprising: a slide channel extending from a first end of the upper surface to a stop adjacent to a second end of the upper surface (a channel formed by a pair of elongate side rails 32 and 34 extending between two pairs of posts 20 and 22 on a first and second side respectively; Fig. 1; Col. 2, lines 42-51); a fiducial mark disposed in the slide channel, the fiducial marker located a defined distance from the stop for placing the solution to be spread (an indicator 40 located equidistant between the rails 32 and 34 and adjacent an indentation 30 a defined distance from the posts 22; Fig. 1; Col. 2, lines. 53-59); and a support bar extending across the slide channel (a spreader 16 extending between the guide rails 32 and 34; Figs. 1, 3; Col. 3, lines. 62-63). The Examiner submits It would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to combine the fiducial mark from Drury with the device of Nordberg. One of ordinary skill in the art at the time would add the fiducial mark disposed in the slide channel in order to provide the best location for adding the fluid to the substrate before spreading the fluid on the substrate as taught by Drury.
Regarding claim 2 – The Examiner submits the placement of the sample tube holder (606) on the support bar ABOVE the slide channel places the sample tube holder “outside the path of the slide channel” as recited in the claim. See Figure 6 of Nordberg.
Regarding claim 4 – The Examiner submits the sample tube holder (606) would be aligned with the center of the slide channel based on the location of the tube holder as shown in Figures 5-6 of Nordberg.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Nordberg et al. (US 2015/0056695) in view of Drury et al. (US 4,516,522) and further in view of Gibbs (US 5,842,671). Nordberg and Drury as combined in Paragraphs 23-26 above teaches every element of claim 8 except for the removeable sample tube holder. Gibbs teaches a secured receptacle holder which provides the ability to secure a variety of containers to a surface of varying widths and any inclination (columns 1-2). The secured receptacle holder (9) is shown in Figures 1-7 and described in columns 3-6. As shown in the Figures, the receptacle holder (9) includes a main securing post (10a), lower securing post (11a), a plurality of clamping members (20a, 20b) and a holder (25a) for holding a container. During use, the secure holder is attached to the surface using the clamping members (20a, 20b) to provide a secure holder (25a) at the edge of the surface for holding the container. See Figures and column 4, line 65 - column 6, line 13. The Examiner submits it would have been obvious to one of ordinary skill in the art at the time to combine the tube holder from Gibbs with the combined apparatus of Nordberg and Drury. Norberg teaches the use of samples tubes and also the use of reagents or preservatives for mixing and processing the samples. One of ordinary skill in the art would add the receptacle holder to Nordberg and Drury in order to provide a container holder for sample containers and/or additional reagent containers at any location on the apparatus as taught by Gibbs.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Nordberg et al. (US 2015/0056695) in view of Gibbs (US 5,842,671). Nordberg as described in Paragraphs 14-18 above teaches every element of claim 15 except for the removeable sample tube holder that is place below the top surface of the base. Gibbs teaches a secured receptacle holder which provides the ability to secure a variety of containers to a surface of varying widths and any inclination (columns 1-2). The secured receptacle holder (9) is shown in Figures 1-7 and described in columns 3-6. As shown in the Figures, the receptacle holder (9) includes a main securing post (10a), lower securing post (11a), a plurality of clamping members (20a, 20b) and a holder (25a) for holding a container. During use, the secure holder is attached to the surface using the clamping members (20a, 20b) to provide a secure holder (25a) at the edge of the surface for holding the container. See Figures and column 4, line 65 - column 6, line 13. The Examiner submits it would have been obvious to one of ordinary skill in the art at the time to combine the tube holder from Gibbs with the apparatus of Nordberg. Norberg teaches the use of samples tubes and also the use of reagents or preservatives for mixing and processing the samples. One of ordinary skill in the art would add the receptacle holder to Nordberg in order to provide a container holder for sample containers and/or additional reagent containers at any location on the apparatus as taught by Gibbs.
With respect to the location of the container holder in claim 15, the Examiner again notes the Figures of Gibbs show the container holder (25a) of Gibbs having a cylindrical shape configured to hold a container in an upright position. With respect to claim 11, the Examiner submits using the configuration of the receptacle holder (9) of Gibbs shown in Figure 5B and attaching it to the base of Nordberg would inherently result in the sample tube holder being positioned at a location that is below the support bar. With respect to claim 15, the Examiner submits one of ordinary skill in the art at the time would recognize placing the receptacle holder (9) at the location of the second end of the upper surface opposite the stop would be one of a finite, identifiable and predictable places on the base where the receptacle holder may be placed with a reasonable expectation of success. See MPEP 2143, Section I, E - "Obvious to Try".
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAYNE K HANDY/Examiner, Art Unit 1798 April 18, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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