DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. However, the Figures do not appear to depict “at least two neighboring coils”. The Figures also do not appear to depict coils “surrounding the array”. Therefore, these features must be shown or canceled from the claims. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 4, 5, 14 and 16-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. More specifically, the specification does not appear to provide support for coils “surrounding the array”. Paragraph [0026] of the specification indicates that neighboring coils may be provided, and paragraphs [0026], [0032] and [0065] describe how the coils surround individual vessels. Fig. 1 additionally shows how the coils surround individual vessels. However, there appears to be no description of how the coils may be configured to surround the entire array of vessels.
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.
Claims 1, 4, 5, 14 and 16-20-are rejected under 35 U.S.C. 103 as being unpatentable over Bentley (US 20140216917) in view of Hormann (US 6258323).
With respect to claims 1 and 14, Bentley discloses a device and kit comprising at least one vessel (Figure 3:12) having an axis of rotational symmetry. A single digit number of magnets (Figure 4:100) are disposed inside each vessel, wherein the largest dimension of the magnets is smaller than ½ the smallest dimension of each of the vessels. This is shown in Figs. 4 and 12A-12D. In the alternative, mere changes in size and shape that affect device operation in a predictable way are considered to be prima facie obvious. See MPEP 2144.04. A power source (Figure 10:88) is configured to deliver pulsed current to at least two neighboring coils (Figure 10:86a-86e) surrounding each vessel, wherein the coils are configured to trigger movement of each magnet with acoustic to ultrasonic frequency in three dimensions. The coils have one to one thousand windings, and the distance between the at least two neighboring coils is shown in Figs. 10 and 12 to be approximately the largest dimension of the magnets 100. Bentley does not mention lysing cells or using lysis beads. Furthermore, the neighboring coils have an axis of rotational symmetry that is aligned with the axis of rotational symmetry of the vessel. Bentley, however, does not appear to show an array of vessels.
Hormann discloses a device comprising an array of vessels (Figure 2:4), wherein each vessel includes a single digit number of magnets (Figure 2:96) inside. A power source is configured to deliver pulsed current to at least one coil comprised of an electric conductor (Figure 2:98) surrounding the array. The at least one coil is configured to trigger movement of each magnet with acoustic to ultrasonic frequency, wherein the movement is in three dimensions and does not involve lysis beads (“Means 98 for selectively propelling agitator 96 positioned in each of reaction vessel 4 typically include induction coils that produce motion due to magnetic force on agitator 96”). This is described in column 10, lines 29-59.
Before the effective filing date of the claimed invention, it would have been obvious to use the Bentley coils to agitate the contents of a plurality of vessels arranged as an array. Hormann teaches that this would allow one to simultaneously and controllably conduct multiple processes under the same or different reaction conditions. Hormann additionally shows how an array of vessels may be arranged in communication with a coil configuration without significantly increasing the overall size of the apparatus. Those of ordinary skill would have recognized that this improvement would enable high-throughput screening, synthesis, testing, processing, etc.
With respect to claims 4, 5 and 16-18, Bentley and Hormann disclose the combination as described above. The Bentley power source is fully capable of delivering a pulsed current and operating at a wide variety of frequencies, including those between 2 kHz and 1 MHz. Apparatus claims cover what a device is, not what a device does. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
In the event that recitations relating to operating frequency and current do not represent intended use recitations, it still would have been obvious to operate the Bentley system by using the power source to deliver different pulsed currents at different frequencies to the coil. It would have been obvious to select a coil having essentially any number of windings, such as those having 2 windings. It is within the ability of one of ordinary skill to optimize the operating parameters of a prior art system. Here, one of ordinary skill would have understood that modifying the operation of the power source and coils would affect predictably affect mixing within the vessel.
With respect to claims 19 and 20, Bentley and Hormann disclose the combination as described above. Bentley depicts coils having 1 to 10 windings. It would have been obvious to select a coil having essentially any number of windings, such as those having 2 windings.
Response to Arguments
In response to Applicant’s amendment filed 18 August 2026, a new ground of rejection is made in view of the Bentley reference.
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 NATHAN ANDREW BOWERS whose telephone number is (571)272-8613. The examiner can normally be reached M-F 7am-5pm.
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, Michael Marcheschi can be reached at (571) 272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN A BOWERS/ Primary Examiner, Art Unit 1799
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