DETAILED ACTION
Status of the Claims
Claims 1-14, 18, and 21-23 are currently pending.
Claims 15-17 and 19-20 have been canceled by Applicant.
Claims 1, 4-8, 10-14, 18, and 21 are amended.
Claims 22-23 are new.
Claims 1-14, 18, and 21-23 are the subject of this Office Action.
The following Office Action is in response to Applicant’s communication dated 12/30/2025. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn. The following rejection(s) and/or objection(s) are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/30/2025 has been entered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
Instant application 17/423,950 filed on 07/19/2021 is a 371 national stage entry of PCT/CN2019/072738 filed on 01/23/2019.
Claim Interpretation
As per MPEP § 2111 and § 2111.01, during patent examination, the pending claims must be interpreted as broadly as their terms reasonably allow while being consistent with the specification. The words of a claim must be given their ‘plain meaning’ unless such meaning is inconsistent with the specification, wherein ‘plain meaning’ of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. Because applicant has the opportunity to amend the claims during prosecution, giving a claim its broadest reasonable interpretation will reduce the possibility that the claim, once issued, will be interpreted more broadly than is justified. In re Yamamoto, 740 F.2d 1569, 1571 (Fed. Cir. 1984)
Below are notes made by the examiner regarding claim interpretation of the most recent set of claims. Applicant is respectfully invited to comment on or dispute any of these statements.
Claim 4 recites a microbead “wherein the outer contour of the edge region before and after engraving the code is rectangular” and claim 11 similarly recites a microbead “wherein the outer contour of the edge region before and after engraving the code is oblate”. It is noted that claim 1, from which claims 4 and 11 depend, is drawn to a “microbead with a code engraved on an outside of the microbead”, which is a product. Since claim 1 (and therefore claims 4 and 11) are drawn to an engraved microbead, then the limitations regarding the shapes of the microbead before engraving are being reasonably interpreted akin to product-by-process limitations. As per MPEP § 2113, “product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps”, even if these steps are implied. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.’ In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In the present case, the implied process limitations of claims 4 and 11 (i.e., regarding the initial shape before engraving) do not distinguish the claimed invention from the prior art in accordance with MPEP § 2113. One of ordinary skill would expect the product to be the same no matter the shape before engraving.
Claim Rejection(s) – 35 USC § 112(a)
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 of carrying out his invention.
Claims 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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(s), at the time the application was filed, had possession of the claimed invention. This rejection concerns “new matter.”
Claim 11 has been amended to include the limitation that “the outer contour of the edge region before and after engraving the code is oblate” and that “the edge region comprise [sic] four straight side regions and four arc regions, and the four straight side regions and the four arc side regions …”, however, the specification as originally filed does not provide adequate written description support for an oblate contour with four straight side regions and four arc side regions. Rather, the specification at para [0049] describes this as “[s]pecifically, in the embodiment, the microbead 80 has an oblate shape … [f]urthermore, the microbead 80 includes an edge region 81 and a central region 82 surrounded by the edge region 81. The edge region 81 includes two straight side regions and two arc regions 84.”
Applicants are reminded, as per 37 C.F.R. 1.121, that no amendment may introduce new matter into the disclosure of an application, and that in accordance with MPEP § 2163(II)(A)(3)(b), when filing an amendment an applicant should show support in the original disclosure for new or amended claims.
MPEP §2163(I) states that to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. MPEP §2163(I)(B) explains the written description matter as it relates to new and amended claims, stating that the written description requirement prevents an applicant from claiming subject matter that was not adequately described in the specification as filed.
MPEP 2163.06(I) notes “If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112, first paragraph - written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).”
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 11 and 12 each recites an oblate outer contour of the edge region that comprises “four straight side regions and four arc side regions”. The specification at para [0049] cites Fig. 10A and 10B as being oblate in shape (before and after engraving, respectively) and are reproduced here:
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Further, the specification at para [0049] describes this as “[s]pecifically, in the embodiment, the microbead 80 has an oblate shape … [f]urthermore, the microbead 80 includes an edge region 81 and a central region 82 surrounded by the edge region 81. The edge region 81 includes two straight side regions and two arc regions 84.” Since claims 11-12 recite four straight side regions and four arc side regions, but the spec only recites two straight side regions and two arc side regions for an oblate shape microbead, the metes and bounds of the claims are unascertainable.
Claims 13 and 14 each recites the limitation "the four corner regions", “the four arc side regions”, and “the four straight side regions” of the microbead of claim 1. There is insufficient antecedent basis for these limitations in the claim since claim 1 does not recite corner regions, side arc regions, and straight side regions. Accordingly, the metes and bounds of the claims are unascertainable.
As per MPEP 2173: It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art of the boundaries of protected subject matter. Therefore, claims that do not meet this standard must be rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph as indefinite. Further, as per MPEP 2173.02: If the language of the claim is such that a person of ordinary skill in the art could not interpret the metes and bounds of the claim so as to understand how to avoid infringement, a rejection of the claim under 35 U.S.C. 112, second paragraph, would be appropriate. As currently written, the metes and bounds of the rejected claims are unascertainable for the reasons set forth above, thus the above claim(s) and all dependent claims are rejected under 35 USC 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph.
Claim Rejections – 35 U.S.C. 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Santaló Pedro et al.
Claims 1-10, 18, and 21-23 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Santaló Pedro et al. (U.S. PGPub 2012/0190056 A1, of record).
Regarding claim 1, Santaló Pedro discloses a microbead (e.g., “encoded microparticle” as per the Abstract and throughout) with a code engraved on an outside of the microbead (e.g., “an encoded microparticle … and its external shape comprises a code by which it can be identified” as per para [0008]), comprising:
a central region (e.g., termed a “base structure” or “base element” as per para [0013] and throughout); and
an edge region surrounding the central region, an outer contour of the edge region before and after engraving the code is non-circular (e.g., “substantially flat and substantially rectangular” as per para [0014] and throughout), the edge region comprising a plurality of coding positions, the code of the microbead is presented by engraving coding patterns on the plurality of coding positions, a plurality of bits of the code corresponds to the plurality of coding positions one-by-one (e.g., “its external shape comprises a code by which it can be identified” as per para [0008] wherein the bits are mapped to the shapes on the contour as per para [0013]), and the coding patterns are triangular coding patterns, rectangular coding patterns, trapezoidal coding patterns, or any combination thereof (e.g., as per Fig. 1-2, 4, 6, 9-10, etc.);
a coding pattern, of the coding patterns, of at least one of the plurality of coding positions has directionality, the coding pattern indicates a front side and a back side of the microbead, a starting position of the code, and a direction of the code (e.g., “the external shape of the microparticle comprises a distinctive marker allowing determination of the microparticle's orientation. In this way, the external shape of the particle (i.e. its code) can only be interpreted in a single way” as per para [0012] and as shown in Fig. 1, etc.).
Regarding claim 2, Santaló Pedro discloses the above microbead, wherein the microbead has a first length in a first dimensional direction and a second length in a second dimensional direction perpendicular to the first dimensional direction, the first length is longer than the second length, and the edge region surrounds the central region at least on a plane formed by the first dimensional direction and the second dimensional direction (e.g., “substantially flat and substantially rectangular” as per para [0014] and/or Fig. 1-2, 4, 6, 9-10, etc.).
Regarding claim 3, Santaló Pedro discloses the above microbead, wherein the plurality of coding positions is at least arranged on the plane formed by the first dimensional direction and the second dimensional direction (e.g., “substantially flat and substantially rectangular” as per para [0014] and/or Fig. 1-2, 4, 6, 9-10, etc.).
Regarding claim 4, Santaló Pedro discloses the above microbead, wherein the outer contour of the edge region before and after engraving the code is rectangular, the edge region comprises four corner regions and four side regions, and the four corner regions and the four side regions are connected to each other in a direction surrounding the central region (e.g., “substantially flat and substantially rectangular” as per para [0014] and/or Fig. 1-2, 4, 6, 9-10, etc.).
Regarding claim 5, Santaló Pedro discloses the above microbead, wherein at least one of the four corner regions is provided with a positioning device and/or a marking position, and the positioning device and/or the marking position are configured to allow cause a computer identification device to identify a front side and a back side of the microbead, a starting position of the code, and a direction of the code (e.g., “substantially flat and substantially rectangular” as per para [0014] and/or “the external shape of the microparticle comprises a distinctive marker allowing determination of the microparticle's orientation. In this way, the external shape of the particle (i.e. its code) can only be interpreted in a single way” as per para [0012] and/or Fig. 1-2, 4, 6, 9-10, etc.).
Regarding claim 6, Santaló Pedro discloses the above microbead, wherein a portion of the four corner regions is processed to have a shape different from other portions of the four corner regions, and the portion of the four corner region as a whole serves as the positioning device (e.g., “the external shape of the microparticle comprises a distinctive marker allowing determination of the microparticle's orientation. In this way, the external shape of the particle (i.e. its code) can only be interpreted in a single way” as per para [0012] and as shown in Fig. 1, etc.).
Regarding claim 7, Santaló Pedro discloses the above microbead, wherein a portion of the four corner regions is provided with a positioning protrusion, and the positioning protrusion serves as the positioning device (e.g., as per Fig. 1).
Regarding claim 8, Santaló Pedro discloses the above microbead, wherein the marking position is an oblique line segment generated by cutting one of the four corner regions (e.g., as per Fig. 1).
Regarding claim 9, Santaló Pedro discloses the above microbead, wherein a center of a circle where the arc segment is located is on the microbead (e.g., as per Fig. 1-2, 4, 6, 9-10, etc.).
Regarding claim 10, Santaló Pedro discloses the above microbead, wherein the plurality of coding positions is disposed on the four side regions and at least one of the four corner regions (e.g., as per Fig. 1, etc.).
Regarding claims 18 and 21, Santaló Pedro discloses the above microbead, wherein the coding pattern having the directionality further has a preset vertex, the preset vertex deviates to or from a preset direction, and the preset direction is the direction of the code on the microbead. Santaló Pedro discloses microbeads with a plurality of vertices along the outside contour, for example, in Fig. 1-2, 4, 6, 9-10, etc. Santaló Pedro further states that “the external shape of the microparticle comprises a distinctive marker allowing determination of the microparticle's orientation. In this way, the external shape of the particle (i.e. its code) can only be interpreted in a single way” as per para [0012]. Therefore, it is reasonable to interpret the one or more vertices of the reference to dictate a direction of the code on the microbead.
Regarding claim 22, Santaló Pedro discloses the above microbead, wherein three of the four corner regions are cut to have an obtuse-angle shape, a remaining one of the four corners has a right-angle shape, and the three of the four corner regions as a whole serves as the positioning device (e.g., as per Fig. 1).
Regarding claim 23, Santaló Pedro discloses the above microbead, wherein three of the four corner regions define three through holes penetrating the microbead, respectively, and the three through holes serve as the positioning device; or three of the four corner regions are provided with three positioning protrusions, respectively, and the three positioning protrusions serve as the positioning device (e.g., as per Fig. 10c).
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Response to Arguments
The 12/30/2025 remarks argue: not all elements are taught.
Applicant's arguments have been fully considered but they are not persuasive for at least the following reasons.
Specifically, the remarks at page 9 assert that the Santaló Pedro reference does not overcome the alleged deficiencies of the Yang reference with regarding to newly amended claim 1, but does not specify which aspect of the claim is not taught by Santaló Pedro. In response, it is noted that all of the claim limitations of the present set of claims have been addressed with a discussion of how the teachings of Santaló Pedro anticipate them in the rejection above.
Conclusion
No claims are allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY FLINDERS whose telephone number is (571)270-1022. The examiner can normally be reached M-F 10-6:00 EST.
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/JEREMY C FLINDERS/
Primary Examiner, Art Unit 1684