DETAILED ACTION
Status of the Claims
Claims 1-12, 18, and 21-23 are currently pending.
Claims 13-17 and 19-20 have been canceled by Applicant.
Claims 1 and 11-12 are amended.
Claims 1-12, 18, and 21-23 are the subject of this Office Action.
The following Office Action is in response to Applicant’s communication dated 04/28/2026. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn.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.
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.
Modified Claim Rejections – 35 U.S.C. 102
Necessitated by Amendments
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 04/28/2026 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 pages 7-8 assert that “Santaló Pedro fails to disclose one of the 8 bits of the code having directionality” and “the marker is not included in the code comprising a total of 8 bits in Santaló Pedro, and therefore, the marker in Santaló Pedro cannot be equivalent to the code pattern having directionality in amended claim 1.”
This argument has been fully considered but is not persuasive at least because these arguments are based on the erroneous assertion in the remarks that the plurality of bits of the code as disclosed by Santaló Pedro does not correspond to the plurality of coding positions one-by-one. Specifically, at least the following two limitations of amended claim 1 that require (1) “a plurality of bits of the code corresponds to the plurality of coding positions one-by-one” and (2) “a coding pattern, of the coding patterns, of at least one of the plurality of coding positions has directionality, the coding pattern having the directionality indicates a front side and a back side of the microbead, a starting position of the code, and a direction of the code” are functional limitations. As per MPEP § 2173.05(g), a “claim term is functional when it recites a feature ‘by what it does rather than by what it is’”. The same MPEP section states that “[t]here is nothing inherently wrong with defining some part of an invention in functional terms” and that “[a] functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used” (emphasis added). MPEP § 2114(II) further explains that "[A]pparatus claims cover what a device is, not what a device does" citing Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original), further stating that 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, citing Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See also In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432. In other words, claims directed to an apparatus or product must be distinguished from the prior art in terms of structure rather than function. In the present case, taking Figure 1(a) as an example:
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This example from Santaló Pedro (and also several other examples) possesses all of the required structural limitations required to perform the functional limitations identified in the claim. Specifically, for the functional limitations of (1) “a plurality of bits of the code corresponds to the plurality of coding positions one-by-one” and (2) “a coding pattern, of the coding patterns, of at least one of the plurality of coding positions has directionality, the coding pattern having the directionality indicates a front side and a back side of the microbead, a starting position of the code, and a direction of the code”, the structure of Santaló Pedro depicted above can reasonably and inherently perform these functional limitations. For example, in addition to the markers labeled “Bit1” to “Bit8” (termed ‘coding pattern’ in the claims), there exists at least one other distinctive marker (or ‘coding pattern’) being the portion circled in page 7 of the remarks and corresponding to the edge near the final “t” in “Start”, which can correspond to a bit and having the directionality to indicate a front side and a back side of the microbead, a starting position of the code, and a direction of the code, as required by the claim. Therefore, the disclosure of Santaló Pedro fairly anticipates claim 1 as detailed herein.
Regarding dependent claims 2-10, 18, and 21-23, the remarks do not offer further arguments beyond what was set forth with regard to claim 1, above. To the extent that Applicant is merely repeating their previous argument, the Examiner contends that those issues were adequately addressed in the above sections, which are incorporated in their entireties herein by reference.
New Claim Rejections – 35 U.S.C. 103
Necessitated by Amendments
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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Santaló Pedro et al. and Steenblik et al. and/or Ho et al.
Claims 1-12, 18, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Santaló Pedro et al. (U.S. PGPub 2012/0190056 A1, of record) in view of Steenblik et al. (U.S. 7,288,320 B2) and/or Ho et al. (U.S. 7,871,770 B2).
Santaló Pedro is relied on as above, however, it is noted that the reference is silent to the limitations of the outer contour of the edge region of the microbead being oblate with two arc regions and two straight regions, as set forth in claims 11-12.
Note that Santaló Pedro specifically states that “Within the scope of the present invention, any external shape which allows unique identification may be used” (e.g., as per para [0014]).
Steenblik similarly discloses microbeads that may be nearly any shape, for example, as depicted in Fig. 1-3:
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Similarly, Ho discloses microbeads that may be oblate-shaped, as per at least Fig. 2:
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It would have been prima facie obvious to a person of ordinary skill in the art prior to the effective filing date of the application to form the microbeads in the oblate shape as presently claimed.
In accordance with MPEP 2141 citing KSR International Co. v. Teleflex Inc. (KSR), 550 U.S. 398, 82 USPQ2d 1385,1395 (2007), "[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results”, and as per MPEP 2143(I)(A), the rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. In the present case, all of the elements of the shape of the contour edge of the microbead were well known in the art, as per Steenblik and Ho, the mere combining of the individual elements in one embodiment in the manner of the claimed invention results in no change in the elements respective functions, and the combination yields nothing more than predictable results.
One of ordinary skill in the art would have had a reasonable expectation of success as of the application’s effective filing date in combining the teachings of the prior art references to arrive at the invention as presently claimed since it was shown by at least all three references that the microbeads could reasonably be manufactured in many different shapes, including the oblate shape.
Conclusion
No claims are allowed.
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 extension fee 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 date of this final action.
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
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