www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 2231371450
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`15/901,993
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`02/22/2018
`
`Kouji IKEDA
`
`ISHII-58836
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`4666
`
`759°
`52°“
`PEARNE & GORDON LLP
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`09’2””
`
`1801 EAST 9TH STREET
`SUITE 1200
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`CLEVELAND, OH 44114-3108
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`HURST~ JONATHAN M
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`1799
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`PAPER NUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
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`09/25/2020
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
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`following e—mail address(es):
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`patdoeket@pearne.eom
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`PTOL-90A (Rev. 04/07)
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`

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`017/09 A0170” Summary
`
`Application No.
`15/901 ,993
`Examiner
`JONATHAN M HURST
`
`Applicant(s)
`IKEDA et al.
`Art Unit
`1799
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`AIA (FITF) Status
`Yes
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
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`Status
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`1)I Responsive to communication(s) filed on 7/29/2020.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2a)[:] This action is FINAL.
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`2b)
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`This action is non-final.
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`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
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`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims*
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`5)
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`Claim(s)
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`1—13 is/are pending in the application.
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`5a) Of the above claim(s) fl is/are withdrawn from consideration.
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`
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`E] Claim(ss)
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`is/are allowed.
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`Claim(ss) 1_—7 is/are rejected.
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`1:] Claim(ss_) is/are objected to.
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`) ) ) )
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`S)
`are subject to restriction and/or election requirement
`C] Claim(s
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
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`httpfiwww.”smogovmatentsflnit_events[pph[index.'§p or send an inquiry to PPeredhack@gsptg.ggv.
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`Application Papers
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`10):] The specification is objected to by the Examiner.
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`11)I The drawing(s) filed on 2/22/2018 is/are: a)I accepted or b)D objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
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`12)I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
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`a). All
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`b)C] Some**
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`c)[j None of the:
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`1.I Certified copies of the priority documents have been received.
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`2E] Certified copies of the priority documents have been received in Application No.
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`3C] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
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`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`1)
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`Notice of References Cited (PTO-892)
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`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 2/22/2018/.
`U.S. Patent and Trademark Office
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`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
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`PTOL-326 (Rev. 11-13)
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`Office Action Summary
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`Part of Paper No./Mai| Date 20200918
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`

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`Application/Control Number: 15/901,993
`Art Unit: 1799
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`Page 2
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`DETAILED ACTION
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`Notice of Pre-AIA or AIA Status
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`The present application, filed on or after March 16, 2013, is being examined under the first
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`inventor to file provisions of the AIA.
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`Election/Restrictions
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`Applicant’s election without traverse of Group | claims 1-7 in the reply filed on 7/29/2020 is
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`acknowledged.
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`Claim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S. C. 102 that form the basis
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`for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless —
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`(a)(1) the claimed i nventionwaspatented, described in a printed publication, or in public use, on sale,
`orotherwise availableto the public before the effective filing date ofthe claimed invention.
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`Claim(s) 1 is/a re rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (US
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`2014/0057346).
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`Regarding claim 1 Johnson discloses a culture medium comprising: (See Johnson Abstract
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`wherein the device cultures microorganisms, i.e. it is a culture medium)
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`a substrate (See Johnson Figs. 1A-1C wherein there is a substrate 30);
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`

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`Application/Control Number: 15/901,993
`Art Unit: 1799
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`Page 3
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`a frame body that includes a first surface, a second surface opposite therefrom, and one or
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`more through holes extending from the first surface through the second surface, and that is mounted to
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`the substrate such that the first surface is opposed thereto(See Johnson Figs. 1A-1C and [0013] wherein
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`a frame body 20 includes a plurality of holes 20 from opposed first and second surfaces. The frame body
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`is mounted to the substrate via the first surface);
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`a plurality of aligned fibers interposed between the substrate and the first surface; (See Johnson
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`(See Johnson [0013] wherein there are a plurality of aligned, i.e. parallel, fibers placed on the upper
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`surface of the substrate prior to bonding the frame body to the substrate and thus they are between the
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`substrate the first surface.)
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`a bonding portion that bonds the substrate, the plurality ofaligned fibers, and the frame body,
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`wherein (See Johnson [0013]-[0014] wherein a bonding portion, i.e. adhesive, bonds the plurality of
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`aligned fibers, frame body, and substrate.)
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`at least a part of the plurality ofaligned fibers is exposed from a first opening that is formed in
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`the first surface by the through hole. (See Johnson [0013] wherein the aligned fibers are exposed to cell
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`culture materials within the wells 22 and thus are exposed from a first opening formed in the first
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`surface by the through hole.)
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections
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`set forth in this Office action:
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`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, ifthe differences between the claimed invention
`a nd the prior a rt are such that the claimed invention as a whole would have been obvious before the
`effective filingdate ofthe claimed invention to a person having ordinarys kill i n the art to which the
`claimed invention pertains. Pa tentabilityshall not be negated bythe manner in whichthe invention
`was made.
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`

`

`Application/Control Number: 15/901,993
`Art Unit: 1799
`
`Page4
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`The factual inquiries for establishing a background for determining obviousness under 35 U.S.C.
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`103 are summarized as follows:
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`1. Determining the scope and contents of the prior art.
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`2. Ascertaining the differences between the prior art and the claims at issue.
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`3. Resolving the level of ordinary skill in the pertinent art.
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`4. Considering objective evidence present in the application indicating obviousness or
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`nonobviousness.
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`Claims 2-7 is/a re rejected under 35 U.S.C.103 as being unpatentable over Johnson (US
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`2014/0057346) as applied to claims above, and further in view of Turner (US 5,571,721).
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`Regarding claim 2 Johnson discloses all the claim limitations as set forth above as well as the
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`device wherein adhesives are utilized but does not disclose the specific adhesives being pressure
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`sensitive.
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`Turner discloses a culture medium wherein a frame body with through holes is bonded to a
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`substrate utilizing bonding features including a channel filled with a pressure-sensitive adhesive. (See
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`Turner Abstract Col. 4 Lines 44-46 wherein the bonding portion includes a pressure-sensitive adhesive.)
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`It would have been obvious to one of ordinary skill in the art at the time of filling to provide
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`bonding features and pressure sensitive adhesive as described by Turner in the device of Johnson
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`because such bonding featuresand adhesives are known in the art to seal a substrate and frame body as
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`required by Johnson and such bonding provides a more convenient assembly and greater bonding
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`strength as would be desirable in the device of Johnson.
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`

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`Application/Control Number: 15/901,993
`Art Unit: 1799
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`Page 5
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`Regarding claim 3 modified Johnson discloses all the claim limitations as set forth above as well
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`as the device further comprising a frame body fixing portion that fixes the frame body to the substrate
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`at an outer edge on the first surface of the frame body. (See Turner Figs.3 and 5A-5F wherein a frame
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`body fixing portion, i.e. channels 90 and or edge 108 fixes the frame body portion 32 to the substrate at
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`an outer edge on the first surface ofthe frame body. Also See Johnson Fig. 1B wherein there is a frame
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`body fixing portion at 23 that fixes the frame body to the substrate at an outer edge of the first surface
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`of the fra me body)
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`Regarding claim 4 modified Johnson discloses all the claim limitations as set forth above as well
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`as the device wherein the frame body fixing portion includes a cured product of a curable resin. (See
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`Johnson Fig. 1B and [0002] wherein the frame body fixing portion is formed from polymer resins
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`including polypropylene and polystyrene which are cured resins. Also See Turner Figs. 5A-5F and Col. 6
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`Lines 54-56 wherein the frame body fixing portion is formed from polymer resins including polystyrene
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`which is a cured resins.)
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`Furthermore regarding the method limitations recited in the claim(s) the examiner notes that
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`even though a product-by-process is defined by the process steps by which the product is made,
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`determination of patenta bilityis based on the product itself.
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`In re Thorpe, 777 F.2d 695, 227 USPQ 964
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`(Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patenta bility of a
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`product does not depend on its method of production.
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`In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ
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`145, 147 (CCPA 1969).
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`|fthe product in a product-by-process claim is the same as or obvious from a
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`product of the prior art, the claim is unpatenta ble even though the prior product was made by a
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`diffe re nt process. ).
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`

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`Application/Control Number: 15/901,993
`Art Unit: 1799
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`Page 6
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`Regarding claim 5 modified Johnson discloses all the claim limitations as set forth above as well
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`as the device further comprising a recess capable of housing therein at least a pa rt of the adhesive is
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`formed on the first surface at a position corresponding to a part of the bonding portion. (See Turner
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`Figs. 5A-5F wherein a recess, i.e. channel, 90 houses at least a part ofthe adhesive 18 therein such that
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`the adhesive is formed on the first surface at a position corresponding to a pa rt of the bonding portion.)
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`Regarding claim 6 modified Johnson discloses all the claim limitations as set forth above as well
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`as the device further comprising a space in which at least a part ofthe adhesive can move is formed
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`between the substrate and the frame body at a position corresponding to the first surface. (See Turner
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`Figs. 5A-5F wherein a recess, i.e. channel, 90 houses at least a part ofthe adhesive 18 and is a space in
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`which at least a pa rt of the adhesive can move between the substrate and the frame body at the first
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`surface.)
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`Regarding claim 7 modified Johnson discloses all the claim limitations as set forth above as well
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`as the device further comprising a protrusion that suppresses extrusion ofthe adhesive into the first
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`opening is formed on at least a part of a circumference ofthe first opening. (See Turner Figs. 5A-5F
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`wherein downwardly protruding sections of the channel 32 hold the adhesive therein and thus suppress
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`extrusion of adhesive into the first opening and are formed on a pa rt of the circumference of the first
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`opening, i.e. the channel walls also form a wall of the first opening and are thus part ofthe
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`circumference.)
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`Conclusion
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`

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`Application/Control Number: 15/901,993
`Art Unit: 1799
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`Page 7
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`Any inquiry concerning this communication or earlier communications from the examiner should be
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`directed toJONATHAN M HURST whose telephone number is (571)270-7065. The examinercan
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`normally be reached on M-F 7AM-4PM.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor,
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`Michael Ma rcheschican be reached on 571-272-1374. The fax phone number for the organization
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`where this application or proceeding is assigned is 571-273-8300.
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`Information regardingthe status of an application may be obtained from the Patent Application
`
`Information Retrieval (PAIR) system. Status information for published applications may be obtained
`
`from either Private PAIR or Public PAIR. Status information for unpublished applications is available
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`through Private PAIR only. For more information about the PAIR system, see http://pair-
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`direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic
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`Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR
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`CANADA) or 571-272-1000.
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`/JONATHAN M HURST/
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`Primary Examiner, Art Unit 1799
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`