DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 06 February 2026 has been entered.
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 Anderson (WO 2009108501) in view of Hormann (US 6258323).
With respect to claims 1 and 14, Anderson discloses a device comprising a vessel (Figure 1:104) having at least one magnetic particle (Figure 1:108) disposed therein. Anderson teaches that the magnetic particle may be a mixing member having a largest dimension smaller than ½ the smallest dimension of the vessels. See Figs. 1 and pages 6-8. A single mixing member (i.e., “a single digit number of magnets”) is depicted in the Figures. A coil (Figure 1:110) comprised of an electric conductor is used to trigger movement of the magnet. The coil is connected to a power source, has from one to one thousand windings and is show to completely surround the vessel. See Figs. 4 and 10. Anderson makes no mention of lysis beads, but instead states that the mixing member is for mixing. Anderson, 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 Anderson coil 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 coil 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, Anderson and Hormann disclose the combination as described above. The Anderson 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 Anderson 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, Anderson and Hormann disclose the combination as described above. Anderson 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.
Claims 1, 4, 5, 14 and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Blankenstein (US 20180045627) in view of Hormann (US 6258323) and Anderson (WO 2009108501).
With respect to claims 1 and 14, Blankenstein discloses a device comprising a vessel (Figure 5C:12) having a plurality of magnetic particles disposed therein. Blankenstein teaches that the magnetic particles are beads (Figure 4B:30) having a largest dimension smaller than ½ the smallest dimension of the vessels. See Figs. 4A and 4B and paragraph [0039]. The beads are described as “one or more magnetic beads 30”, and therefore it is understood that a single digit number of magnets (e.g., 1 magnetic bead 30) may be used. A coil (Figure 5C:36) comprised of an electric conductor is used to trigger movement of the magnets. This is taught in paragraphs [0039]-[0044]. The coil is connected to a power source and has from one to one thousand windings. Blankenstein makes no mention of lysis beads, but instead states that the beads 30 are for mixing. Blankenstein, however, does not expressly show that the coil surrounds 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.
Anderson discloses a device comprising a vessel (Figure 1:104) having at least one magnetic particle (Figure 1:108) disposed therein. Anderson teaches that the magnetic particle may be a mixing member having a largest dimension smaller than ½ the smallest dimension of the vessels. See Figs. 1 and pages 6-8. A single mixing member (i.e., “a single digit number of magnets”) is depicted in the Figures. A coil (Figure 1:110) comprised of an electric conductor is used to trigger movement of the magnet. The coil is connected to a power source, has from one to one thousand windings, and is clearly described as configured to surround the vessel.
Before the effective filing date of the claimed invention, it would have been obvious to ensure that the Blankenstein coil is configured so that it surrounds the vessel. As evidenced by Hormann and Anderson, such a configuration would cause the magnetic particles to be agitated and produce mixing in the vessel in essentially the same way. A mere rearrangement of parts that produces a negligible or predictable change in operation is considered to be prima facie obvious. See MPEP 2144.04 “Rearrangement of Parts”. Hormann and Anderson teach that this would produce a beneficial mixing effect to obtain a homogenous distribution of reagents in the vessel, and that the operation of the coil may be automated, which is superior to manually shaking, stirring and/or rotating a vessel to agitate its contents.
Before the effective filing date of the claimed invention, it also would have been obvious to use the Blankenstein coil 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 coil 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 claim 4, Blankenstein, Hormann and Anderson disclose the combination as described above. The Blankenstein, Anderson and Hormann power sources are fully capable of delivering a pulsed current. 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.
With respect to claims 5 and 16-18, Blankenstein, Hormann and Anderson disclose the combination as described above. The Blankenstein, Anderson and Hormann coils are fully capable of being operated at a wide variety of frequencies, including those between 2 kHz and 1 MHz. It would have been obvious to select an appropriate frequency suitable for agitating magnetic particles when operating the Blankenstein device.
With respect to claims 19 and 20, Blankenstein, Hormann and Anderson disclose the combination as described above. Blankenstein and Anderson each depict 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 20 January 2026, the previous rejections have been withdrawn. However, upon further consideration, a new ground of rejection is made in view of the combination of Anderson with Hormann and the combination of Blankenstein with Hormann and Anderson.
Conclusion
This is a non-final rejection.
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.
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/NATHAN A BOWERS/Primary Examiner, Art Unit 1799
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