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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 08/05/2026 has been entered.
Claim Rejections - 35 USC § 112
The previous claim rejection under 35 U.S.C. § 112(b) is withdrawn in light of the amendments.
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.
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.
Claims 1 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Chan (US 20190153545) (previously cited) in view of Fodor (US 20170337459) (previously cited), Wang (US 20040058389) (previously cited), and Chakravarthy (US 20130123145) (newly cited), as evidenced by Brogger (US 20010049101) (previously cited).
Regarding claim 1, Chan discloses an apparatus for capturing biological material (abstract, nanoshell-coated barcodes), comprising:
a plurality of optically readable capture particle (ORCP) (abstract “nano-shell coated barcodes” and see Chan’s experiment completed on this in paragraphs [0154]-[0157] “QD540 and QD580 were used to make the 4-plex barcode” and Figs. 17A-17C) each comprising:
one or more optically readable particles (ORPs) (paragraphs [0002] and [0103] coated quantum dots) each ORP comprising an optical barcode (paragraph [0002] emission spectrum) to uniquely identify each of the plurality of ORCPs (abstract nanoshell-coated barcodes); and
a plurality of biological capture sites associated with the one or more ORPs (paragraphs [0129] and [0157]),
each of the plurality of biological capture sites including a nucleotide strand (paragraphs [0110] and [0129] “DNA probes”) configured to capture DNA (paragraph [0149] positive control DNA strand given in paragraph), and each nucleotide strand comprising an oligonucleotide cellular (paragraph [0085] and [0157]) barcode sequence (paragraph [0149] capture probe sequence given in paragraph) uniquely identifies (paragraph [0149], through the DNA strand sequence, for example those present in paragraph [0149] or Table 1) the ORCP (abstract “nano-shell coated barcodes”; and, paragraphs [0129], [0130]-[0131], and [0157]; Table 1 for DNA barcodes) with which the plurality of biological capture sites is associated (paragraphs [0110] and [0129] “DNA probes”), and
wherein the one or more ORPs (paragraphs [0002] and [0103] coated quantum dots) comprise a semiconductor disk particle (paragraph [0103] inherent to quantum dots, see Brogger as an evidentiary reference paragraph [0015]), wherein the semiconductor disk particle comprises a resonator (paragraphs [0103] coating for quantum dot, polystyrene) and a gain medium (paragraph [0103] QDs, also known as quantum dots).
If it is deemed that Chan does not specifically disclose uniquely identifying each of the plurality of ORCPs, Fodor discloses this limitation.
Fodor discloses uniquely identifying each of the plurality of ORCPs (paragraphs [0008], [0188]-[0189], and [0225] “barcodes on different solid supports can differ by at least one nucleotide”, “The potential diversity of the compound library thus created is determined by the number of unique building blocks (e.g. nucleotides) available for each coupling step, and the number of coupling steps used to create the library”, and “an indexed library of the stochastically barcoded targets”).
In the analogous art of spatially addressable molecular barcoding, it would have been obvious to one skilled in the art before the effective filing date to modify the cellular barcode of Chan with the diverse library of unique barcodes of Fodor in order to determine the unique identities of target molecules, which is important for clinical applications, diagnostics, and biomedical research (Fodor, paragraph [0003]). This would build upon Chan’s invention in an obvious manner, as Chan already describes a 4-plex DNA strand assay (see Chan, [0130]-[0131] and [0154], and, Table 1).
Notably, Chan discloses cellular barcodes that can differentiate species of microorganisms from each other (paragraph [0158]).
Chan does not disclose one or more optically readable particles (ORPs) embedded within a hydrogel.
Fodor discloses one or more optically readable particles (ORPs) (paragraphs [0013] and [0019]) embedded within (paragraph [0124]) a hydrogel (paragraph [0122] for a bead embedded in a hydrogel matrix).
In the analogous art of spatially addressable molecular barcoding, it would have been obvious to one skilled in the art before the effective filing date to modify the ORPs of Chan to be embedded in a hydrogel of Fodor in order to locate the spatial position of a bead within a substrate (e.g., gel, matrix, scaffold, or polymer) using the spatial label present on the stochastic barcode on the bead which can serve as a location address (Fodor, paragraph [0122]).
Regarding the phrase “RNA”, it would have been obvious to one skilled in the art before the effective filing date to modify the oligonucleotide cellular barcode sequence of Chan to capture RNA in order to find the transcriptome of the cell (that is, which genes had been transcribed into RNA under experimental conditions).
If it is deemed that the DNA positive control of Chan would not bind RNA, Wang discloses that DNA/RNA pairs exist (paragraph [0040]).
In the analogous art of microspheres and binding pairs of biological molecules, it would have been obvious to one skilled in the art before the effective filing date to modify the DNA sequence of Chan to bind to the RNA sequence of Wang in order to find the transcriptome of the cell (that is, which genes had been transcribed into RNA under experimental conditions).
If it is deemed that the term “disk particle” is not fulfilled by Chan, the shape of the particle would have been obvious. In addition, the claim limitation is obvious, as the configuration of the claimed shape is a matter of choice, absent persuasive evidence that the particular configuration is significant. MPEP § 2144.04(IV)(B). It would have been obvious to one skilled in the art before the effective filing date to modify the shape of the particle to be a disk as an alternative to a microsphere so that there is less material used in the production of a quantum dot.
Nevertheless, if a reference needs to fulfill the limitation, Chakravarthy discloses a semiconductor disk particle (paragraph [0033]).
In the analogous art of assaying biological parameters, it would have been obvious to one skilled in the art before the effective filing date to modify the shape of the particle to be a disk as an alternative to a microsphere so that there is less material used in the production of a quantum dot.
Regarding claim 9, Chan discloses wherein the optical barcode includes an emission spectrum including at least one peak (paragraph [0136]).
Regarding claim 10, Chan discloses wherein each of the plurality of ORCPs comprises a plurality of gain media and a plurality of resonators (Fig. 1 and Fig. 17, paragraph [0082] “QD530 and QD580” and also paragraphs [0106]-[0108] sequestered droplets of QDs),
wherein each of the plurality of gain media includes a different emission spectrum (paragraph [0002]).
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Chan (US 20190153545) (previously cited) in view of Fodor (US 20170337459) (previously cited), Wang (US 20040058389) (previously cited), and Chakravarthy (US 20130123145) (newly cited), as evidenced by Brogger (US 20010049101) (previously cited) as applied to claim 1, further in view of Brogger (US 20010049101) (previously cited).
Regarding claim 12, Chan discloses wherein the semiconductor particle (paragraph [0103] inherent to quantum dots, see Brogger as an evidentiary reference paragraph [0015]) is contained within a transparent coating (paragraph [0103] “polystyrene”).
If it is deemed that the polystyrene of Chan does not cite a transparent coating, Brogger discloses a transparent coating of polystyrene (claim 16).
In the analogous art of micro-labeling and reporter molecules, it would have been obvious to one skilled in the art before the effective filing date to modify the coating of Chan with the transparent polystyrene of Brogger in order to identify the particle under a light source (Brogger, paragraph [0033], and for the use of quantum dots paragraphs [0063] and [0070]).
Regarding claim 13, Chan discloses wherein the one or more ORPs comprise a plurality of semiconductor particles (Figs. 1B and 1C, paragraph [0108], inherent to quantum dots, see Brogger as an evidentiary reference paragraph [0015]) contained within the transparent coating (Figs. 1B and 1C, paragraph [0107]-[0108]), wherein each of the plurality of semiconductor particles comprises a gain medium having a different emission spectrum from each of the other of the plurality of semiconductor particles (paragraphs [0064]-[0065] “QD555” and Figs. G, H, and I “QD510” “QD575”, and “QD665” and paragraph [0082] “QD530” and “QD580”).
If it is deemed that the polystyrene of Chan does not cite a transparent coating, Brogger discloses a transparent coating of polystyrene (claim 16).
In the analogous art of micro-labeling and reporter molecules, it would have been obvious to one skilled in the art before the effective filing date to modify the coating of Chan with the transparent polystyrene of Brogger in order to identify the particle under a light source (Brogger, paragraph [0033], and for the use of quantum dots paragraphs [0063] and [0070]).
Additional Prior Art References
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Nam (US 20080268450) (newly cited) – This invention is an amplification assay for analyte detection (paragraph [0137]).
Prober (US 20050255523) (newly cited) – This invention is a microparticle-based method and system and applications thereof.
Vu (US 20080220982) (newly cited) – This invention is a nanoparticle probe for capture, sorting, and placement of targets.
Holwitt (US 20090053725) (newly cited) – This invention uses DNA aptamers and quantum dots for the detection of proteins and other targets.
Response to Arguments
Applicant’s arguments filed 08/05/2026 have been fully considered but they are not persuasive.
Regarding the Applicant arguments on pg. 7 of 8, the 35 U.S.C. § 112(b) rejection is withdrawn in light of the amendments.
Regarding the Applicant arguments on pg. 8 of 8, the arguments for claim 1 are based upon the nature of quantum dots in general. New reference Chakravarthy states that quantum dots have very narrow emission peaks in comparison to other fluorophores (Chakravarthy, paragraph [0021] “The emission spectra produced by quantum dots are distinctive (e.g. possess a unique spectral signature) and emission peaks are much narrower than organic dyes thus presenting band width overlap (e.g. cross-talk) as opposed to traditional fluorophores such as organic dyes.”). Chakravarthy also discloses the disk shape of the quantum dot in the current amendments.
Regarding the dependent claims, these claims are rejected as the independent claim is still rejected and no further arguments were made regarding the dependent claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN G ESPERON whose telephone number is 571-272-9807, and whose fax number is 571-273-8464. The examiner can normally be reached 9 am - 6 pm Monday through Thursday, and 9 am - 6 pm every other Friday.
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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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/N.G.E./Examiner, Art Unit 1799
/MICHAEL A MARCHESCHI/Supervisory Patent Examiner, Art Unit 1799
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