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 .
Status of claims / Response to Amendment
This office action is in response to an amendment filed on May 19, 2026.
Claims 1 and 3-25 were previously pending. Applicant amended claim 1.
Claims 1 and 3-25 are currently pending, with claims 4-5, 7, 9-10, 14-24 withdrawn.
Claims 1, 3, 6, 8, 11-13 and 25 are under consideration.
Applicant's claim amendments overcame the following objection and rejections:
Objection to claim 1;
Rejections of Claims 1, 3, 6, 8, 11-13 and 25 under 35 U.S.C. 112(b), in claim 1.
All other previously presented rejections are maintained for reasons given in the "Response to Arguments" below.
Applicant' s amendments and arguments have been thoroughly reviewed, but are not persuasive to place the claims in condition for allowance for the reasons that follow.
Response to Arguments
Applicant's arguments filed on May 19, 2026 have been fully considered.
Claim Rejections - 35 USC § 103
In the prior Office Action (Non-Final Office Action-02/19/2026):
Claims 1, 6, 8, 11-13 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Velders, in view of Bio-Rad2, as evidenced by BioRad; Bioplastics; Eppendorf.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Velders, in view of Bio-Rad2, as applied to claim 1 above and further in view of MIAO.
These rejections are maintained in this Office Action for reasons below.
Applicant argues that the rejections above should be withdrawn (Remarks, page 7-10). Applicant's arguments have been fully considered but are not found persuasive.
First, Applicant's entire argument regarding the 103 obviousness rejection fails, because it attacks each reference individually rather than addressing the combination of references as presented in the office action.
One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In reKeller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In reMerck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Where a rejection of a claim is based on two or more references, a reply that is limited to what a subset of the applied references teaches or fails to teach, or that fails to address the combined teaching of the applied references may be considered to be an argument that attacks the reference(s) individually. “[T]he test for obviousness is what the combined teachings of the references would have suggested to [a PHOSITA].” In re Mouttet, 686 F.3d 1322, 1333, 103 USPQ2d 1219, 1226 (Fed. Cir. 2012).
Therefore, this argument approach is not sufficient in responding to the grounds of rejections based on combined teaching of the art.
Applicant asserts that Velders does not suggest real time colorimetric detection (Remarks, page 8).
This is not persuasive.
Velders expressly teaches and suggests real-time colorimetric detection and teaches that suitable reagents are known in the art:
"We also tested an end point detection with SYBR green, and this latter gave an eye detectable signal (Fig. 1, insert). There are also other molecules that can be used either for end-point or real-time eye detection of the LAMP reaction [16]. In fact, it should be noted that being the PDMS transparent, the real-time LAMP can be performed by naked-eye as well. " (page 2. Right-hand col, para 2, lines 12-16 to page 3, left-hand col, lines 1-3)
Velders suggests performing real-time LAMP by naked-eye, therefore a skilled artisan would have readily understood that such monitoring requires the use of colorimetric reagents. Velders expressly teaches reagents for real-time eye detection of the LAMP reaction are known in the art, citing Zhang 1(ref 16), which provides a review on colorimetric reagents suitable for real-time monitoring (page 492-493, e.g., calcein, hydroxy naphthol blue, etc. ). Therefore, a person of ordinary skill in the art would have had a reasonable expectation of success in applying Velders's LAMP assay and device for real-time monitoring, because colorimetric reagents for LAMP that support real-time monitoring were well-known in the art.
Thus, a person of ordinary skill in the art would understand that Velders suggests real-time monitoring of the colorimetric signal using its disclosed LAMP assay and device.
Applicant's assertion that SYBR Green is inhibitory to amplification reactions is unsupported by objective evidence. Accordingly, the assertion has been acknowledged but is not accorded further weight.
Per MPEP§ 716, To be of probative value, any objective evidence should be supported by actual proof, attorney arguments cannot take place of evidence. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) (“An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness.”). See MPEP§ 2145 and MPEP§ 716.
Applicant asserts that "Velders discloses a system in which heating is applied only from the bottom while the reaction vessel remains exposed to ambient air, i.e., without insulation." (Remarks, page 8).
This assertion has been acknowledged; however, it is unclear what the Applicant is attempting to argue, because the claim does not exclude heating the tube only from the bottom. This assertion does not provide any specific reasons as to why either the findings of fact or the legal conclusion of obviousness is allegedly in error.
Since no supposed errors in the examiner’s action have been pointed out, the burden has not been shifted to the examiner and the examiner has made a proper prima facie case of obviousness.
Moreover, based on Applicant's own description, the system taught by Velders is equivalent to the system described in the present application's disclosure. See Fig 2 as well as the corresponding sections of the specification referenced below 2:
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"A schematic representation of an apparatus according to the present invention is shown in Figure 2. The nucleic acid amplification is carried out in reaction tubes 10 (18), which are positioned on a heating element (10) so that only the bottom of the tubes is in thermal contact with the heating element. The camera (13) is arranged such that it can record images through the side wall of the reaction tubes." (specification, page 9)
Applicant asserts "Bio-Rad provides no teaching or motivation to apply pressure as a means of compensating for thermal losses or controlling evaporation in a non-insulated system." (Remarks, page 9).
This is not persuasive. The claim broadly recites applying pressure and does not recite "compensating for thermal losses or controlling evaporation in a non-insulated system." Accordingly, this assertion lacks nexus to the claimed subject matter.
It is also noted that the present disclosure does not provide support for the asserted functions "compensating for thermal losses or controlling evaporation in a non-insulated system." The disclosure does not mention thermal loss at all. Moreover, contrary to Applicant's assertion, the disclosure does not describe any step for controlling evaporation. Rather, the specification indicates that evaporation occurs in the disclosed LAMP method, but does not interfere with the monitoring:
"Another advantage of the heating method of the present invention is that, when the tube is made of a translucent or a transparent material, the content of the tube is visible not only from the top of the tube but more importantly through the side wall. This means that the visual monitoring of a parameter of the assay, such as the colour change in a colorimetric LAMP assay, becomes possible during the run of the assay. This is because the evaporation of the sample during the amplification reaction does not interfere with the monitoring. Therefore, the heating method of the present invention enables real-time monitoring of the assay. " (specification, page 6, lines 7-14). 3
Applicant asserts "experimental evidence demonstrates that the claimed configuration operates under a non-obvious regime. Specifically, the system requires a set temperature of approximately 78°C (see IFU Pebble platform by BIOPIX-T), rather than the standard LAMP temperature of about 65°C." (Remarks, page 9)
This assertion lacks nexus with the claimed subject matter. The claim does not recite LAMP nor specify any temperature. Further, Applicant's argument lacks objective evidence as support as it fails to provide the reference IFU (not submitted in any of the IDS). Nor does it explain how the "Pebble platform" relates to the claimed method. It is noted that neither the claimed method or the entire application's disclosure references a "Pebble platform."
Applicant asserts "The Examiner further assumes that the system disclosed in Velders is directly applicable to a real-time colorimetric setup lacking a heat block." (Remarks, page 9)
This is unpersuasive. The rejection makes no such assumption.
Applicant's argument attacking MAO also relies on the unsupported assertion that "the claimed invention addresses thermal loss due to lack of insulation and evaporation under open conditions." (Remarks, page 10).
Therefore, this is not found persuasive for reasons discussed above.
For the reasons above, Applicant's arguments are unpersuasive. Accordingly, since all the claims remain rejected under the same statutory basis and in view of the same prior art references with the same rationales and teachings, the previously set forth rejections under 35 USC § 103 are properly maintained and updated to reflect the recent claims amendment.
For the purpose of compact prosecution, the examiner has reviewed the application's entire disclosure, but has not readily identified any subject matter that is not taught or suggested by the prior art, or combined in a non-obvious way.
Priority
Regarding claims 1, 3, 6, 8, 11-13 and 25, the earliest priority is 10/31/2019 because the priority document (PCT/EP2019/079845) filed that date is the first to disclose applying any pressure on reaction tube.
Claim Interpretation – Updated
In evaluating the patentability of the claims presented in this application, claim terms have been given their broadest reasonable interpretation (BRI) consistent with the specification, as understood by one of ordinary skill in the art, as outlined in MPEP§ 2111.
For the purpose of applying prior art, claim 1 recites a reaction tube including a bottom.
The specification defines “bottom of the reaction tube” as the part of the tube which is opposite to the top of the tube, wherein the “top of the reaction tube” is the opening through which the liquid sample is loaded into the tube. (page 4, lines 6-9)
For the purpose of applying prior art, claim 1 recites "a parameter of the assay", which is not defined in the applicant's disclosure. Page 6 of specification provides the following description regarding "parameter":
"… the visual monitoring of a parameter of the assay, such as the colour change in a colorimetric LAMP assay, becomes possible during the run of the assay"
Thus, in light of the specification and under BRI, the term "parameter" is interpreted as any observable and/or measurable characteristic related to an assay.
Claim Rejections - 35 USC § 103 -- Maintained
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.
Claims 1, 6, 8, 11-13 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Velders ( Velders et al. ; Loop-mediated isothermal amplification (LAMP) shield for Arduino DNA detection. BMC Res Notes 11, 93 (2018). Feb ; doi.org/10.1186/s13104-018-3197-9), in view of Bio-Rad2 (MJ Mini Gradient Thermal Cycler Instruction Manual; Published by Bio-Rad, 2009), as evidenced by
BioRad (BioRad, “Hard-Shell PCR Plates”, web.archive.org/web/20160823150356/https://www.bio-rad.com/webroot/web/pdf/lsr/literature/Bulletin_5496.pdf ; Archived August 23, 2016 on WaybackMachine);
Bioplastics ("0.2 ml (q)PCR 8-tube-strips with single attached caps"; 2012);
Eppendorf (Eppendorf Forensic DNA Grade; published by Eppendorf AG; 2017).
A) Velders teaches performing a Loop-mediated isothermal amplification (LAMP) with colorimetric detection using a battery-operated, low-cost device for DNA detection by visual inspection (Abstract; page 2, right-hand col, para 2, lines 15-16 to page 3, left-hand col, lines 1-3).
Regarding claim 1, Velders teaches a method comprising:
providing a liquid sample contained within in a reaction tube having a volume of up to
200 μI, said tube including a sidewall made of a translucent or a transparent material
and a bottom, the volume of the liquid sample being sufficient to be viewed through
said sidewall (Fig. 2, the reaction tube being a PCR tube; page 2, methods);
positioning the reaction tube to provide an unobstructed view of the liquid sample through the sidewall during heating (Fig. 2; page 2. Right-hand col, lines 11-12; page 3, left-hand col, lines 1-3 “In fact, it should be noted that being the PDMS transparent, the real-time LAMP can be performed by naked-eye as well.”);
heating the liquid sample by bringing the bottom of the reaction tube in direct thermal
contact with a heating element (Fig. 2; page 2, right-hand col, para 1), and
visually monitoring a parameter of the liquid sample of the assay through the sidewall of the reaction tube while simultaneously heating the bottom of the reaction tube (Fig. 2; page 2, right-hand col, para 2, lines 15-16 to page 3, left-hand col, lines 1-3).
Velders teaches its assay uses Eppendorf PCR tubes (Fig. 2; page 2, lines 11-12), which share a standard size of 200μI being the maximum volume, as evidenced by Bioplastics (entire document, 0.2ml PCR tubes is compatible with most PCR cyclers, including Eppendorf's) and Eppendorf (page 6, PCR Tubes 0.2 mL).
Velders teaches colorimetric detection (Fig. 1; page 2, results, "We also tested an end point detection with SYBR green, and this latter gave an eye detectable signal"). While Velders does not explicitly demonstrate real-time monitoring of the assay, it clearly suggests it by stating: “In fact, it should be noted that being the PDMS transparent, the real-time LAMP can be performed by naked-eye as well.” (page 3, left-hand col, lines 1-3 )
Thus, a person of ordinary skill in the art would understand that Velders suggests real-time monitoring of the colorimetric signal using its disclosed LAMP assay and device.
Accordingly, it would have been prima facie obvious to a skilled artisan to perform real-time colorimetric detection by visually monitoring color changes through the transparent PDMS material holding the PCR tube during amplification, while the tube remains on the heating device for continuous incubation.
Regarding "applying pressure on the reaction tube towards the heating element," although Velders does not explicitly teach this limitation, it would have been an obvious step when performing temperature incubation using a heating block. It is common knowledge in the art that firm contact between reaction tubes and the heating block is necessary to achieve uniform heating. This is supported by Bio-Rad2, an instruction manual for a thermal cycler used for heating and cooling reaction tubes (entire document). Bio-Rad2 teaches that sample vessels must be in complete contact with the heating block to ensure unfirm heating, and explicitly instructs users to press the tubes into the block to ensure proper contact (page 22, lines 15-18).
Therefore, a person of ordinary skill in the art would have found it obvious before the effective filing date of the claimed invention to apply pressure to the reaction tube toward the heating element, to ensure adequate thermal contact and uniform heating during the LAMP assay. This combination would have been obvious as it represents the KSR principle of predictable use of prior art knowledge (i.e., press reaction tube toward heating block to ensure uniform heating) according to a known method (i.e., using heat block to incubate reaction tubes) to yield predictable results. (See MPEP §2143).
The person of ordinary skill would have had a reasonable expectation of success in making the modification because the references disclose complementary teachings that are technically compatible. Both Velders and Bio-Rad2 teach heating samples in PCR reaction tubes, and Bio-Rad2 provides clear motivation and technical justification for ensuring uniform heating via applying pressure, which is directly relevant to Velders 's assay.
B) Regarding claim 6, Velders teaches wherein a longitudinal axis of the reaction tube forms an angle of from 60 to 120 degrees with the heating element (Fig.2, the tube is placed vertically on the heating block, thus the tube's axis is 90 degrees with the heating element).
Regarding claim 8, Velders teaches an area of the reaction tube which is in thermal contact with the heating element is up to 12 mm2, as evidenced by BioRad.
Velders teaches the bottom of a PCR tube is in thermal contact with the heating block (Fig. 2). BioRad teaches a typical PCR reaction tube in PCR plate has a bottom diameter of 3.16mm (page 4) for surface area estimation. A skilled artisan would recognize that individual, separate PCR reaction tubes are standardized to have the same dimensions as those in a plate to ensure compatibility with the thermocycler models commonly available on the market.
The estimated area of the reaction tube bottom which is in thermal contact with the heating element is 7.84 mm2 (A=πr2=π·1.582≈7.84267), which falls within the claimed range of up to 12 mm2.
Regarding claim 11, Velders teaches the reaction tube is made of a transparent material (Fig.1 ).
Regarding claim 12, Velders teaches monitoring is carried out by a digital camera (page 1, right-hand col, lines 9-11; Fig 1).
Regarding claim 13, Velders teaches an isothermal nucleic acid amplification assay (abstract, LAMP).
Regarding claim 25, Velders teaches the volume of the liquid sample is at least 10 μI (page 2, line 8, 25 μI reaction vol ).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Velders, in view of Bio-Rad2, as applied to claim 1 above and further in view of MIAO (CN101696443B - Method and device for reducing evaporation and nonspecific reaction in PCR amplification; published on 2013-05-08; references are made to the attached copy with English translation), and as evidenced by BioRad (BioRad, “Hard-Shell PCR Plates”, web.archive.org/web/20160823150356/https://www.bio-rad.com/webroot/web/pdf/lsr/literature/Bulletin_5496.pdf ; Archived August 23, 2016 on WaybackMachine).
The teaching of Velders and Bio-Rad2 is recited above and applied as for base claim 1.
Regarding claim 3, while Velders in view of Bio-Rad2 teaches applying pressure on the reaction tube towards the heating element, as discussed in section above, it does not specifically teach the amount of pressure required.
MIAO teaches a device comprising a pressure cover with a liquid pressure pad, for improved temperature uniformity and greatly reduced evaporation ([0026]; [0013]).
Regarding claim 3, MIAO teaches the pressure applied to a tube is adjustable between 1-10 kg ([0033];[0040]), suggesting the vertical pressure applied to push down the tube onto the heating block can be routinely optimized by user.
BioRad contributes dimension information of PCR tubes typically used with thermocyclers, which is needed in converting the pressures specified in MIAO, in kgs to the pressure in Mpa as claimed. BioRad teach a typical dimension of a PCR tube appropriate for thermocycler is 5.5mm in diameter (page 4) and a depth of 12.2mm for the bottom half that come in contact with the heating block (19.85mm-7.64mm (total well depth – plate skirt height), page 4). Therefore, the surface area of the tube bottom half in contact with heating block is estimated to be A= πr(r + √(r2 + h2) =π·2.75·(2.75+√(12.22+2.752))≈131.8mm2.
MIAO teaches the pressure applied to a tube is adjustable between 1-10 kg ([0033]; [0040]), 1-10kg per surface area of the tube bottom in contact with the heating block (131.8mm2), converting to MPA is 0.075-0.75MPA, as 1 megapascal [MPa] = 0.1 kilogram-force/millimeter² [kgf/mm²]. This range overlaps with the claimed range of 0.4 MPa to 15 MPa.
MIAO also suggests potential benefits of its pressure cover, such as improved temperature uniformity and reduction of evaporation by more than 80% ([0013]; [0026]).
Therefore, it would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the device taught in Velders by incorporating a pressure cover comprising a liquid pressure pad, as taught by MIAO , to improve heating uniformity and reduce evaporation, as suggested by MIAO.
The person of ordinary skill would have had a reasonable expectation of success in making this modification, as all three references are in the same or over-lapping field of molecular biology, specifically nucleic acid amplification using heating elements. The references are technically compatible and provide complementary teachings. Velders teaches that its device for performing amplification reaction can be easily modified or upgraded (page 1, right-hand col, line 22), and MIAO teaches a specific enhancement for performing amplification reactions involving heating elements ꟷ namely, a pressure cover that improves thermal contact and reduces evaporation. This is directly relevant to Velders's teaching of performing a LAMP assay in a heated condition, and consistent with Bio-Rad2's teaching that applying pressure ensures uniform heating of samples.
Accordingly, a skilled artisan would have reasonably expected that incorporating the pressure cover of MIAO into the system and method of Velders in view of Bio-Rad2 would yield predictable result of more uniform heating and reduced evaporation, thereby improving the control and performance of the nucleic acid amplification process.
Conclusion
No claims are allowed.
THIS ACTION IS MADE FINAL. 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 TIAN NMN YU whose telephone number is (703)756-4694. The examiner can normally be reached Monday - Friday 8:30 am - 5:30 pm.
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/TIAN NMN YU/Examiner , Art Unit 1681 /AARON A PRIEST/Primary Examiner, Art Unit 1681
1 Zhang et al., Brief review of monitoring methods for loop-mediated isothermal amplification (LAMP). Biosens Bioelectron. 2014;61:491–9.
2 For clarity of the record, the Examiner notes that the statement regarding "Subject Matter Not Taught/Suggested in Prior Art" in the Office Action issued two actions ago (Final Office Action - 07/21/2025) ꟷ namely, that a method step using the system disclosed in Fig 2 of the present application was free of art ꟷ was incorrect in view of the updated search, which identified Velders. Accordingly, the system disclosed in Fig 2 is also taught by the cited prior art.
3 Therefore, according to the application's disclosure, real-time assay monitoring is enabled by a method using tube made of a translucent or a transparent material, and the content of the tube is visible through the side wall.
Prosecution Insights