DETAILED ACTION
Status of the Claims
Claims 2-21 are currently pending.
Claims 15-21 have been withdrawn as being drawn to non-elected subject matter (see below).
Claims 2-14 are examined herein.
The following Office Action is in response to Applicant’s communication dated 01/06/2026. Rejection(s) and/or objection(s) not reiterated from previous office actions are hereby withdrawn.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 .
Response to Restriction Requirement
Applicant’s election without traverse of Group I (claims 2-14) in the reply filed on 09/12/2025 is acknowledged.
Claims 15-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/12/2025.
New Claim Objections
Necessitated by Amendment
Claims 5 and 8 are objected to as being dependent upon a rejected base claim, but would be free from the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Appropriate correction is required.
Maintained 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.
Claim 6 is 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.
Claim 6 contains the trademark/trade names CYTOP®, Fluoropel®, and TeflonTM. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade names are used to identify/describe commercially available fluoropolymers and, accordingly, the identification/description is indefinite.
Given that a trademark or trade name is used to identify a source of goods, and not the goods themselves, it is suggested that Applicant amend the claims to properly define the amorphous fluoropolymer (e.g. using generic descriptions).
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.
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Response to Arguments
The 01/06/2026 remarks argue: claims are definite.
Applicant's arguments have been fully considered but they are not persuasive for at least the following reasons.
RE: “Applicant respectfully submits that the claim scope of amended claim 6 is not uncertain, because the trademarks or trade names are not used as a limitation to describe a particular material or product. A person of ordinary skill in the art can readily interpret the metes and bounds of amended claim 6 for the amorphous fluoropolymer in the hydrophobic material of the wells.”
This is not found to be persuasive since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves.
New 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.
Tuson et al.
Claims 2-3, 7, 9-10, and 12-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tuson et al. (Chem. Commun., 2012, 48:1595–1597).
Regarding claims 2-3, 7, and 12-14, Tuson discloses a solid support comprising a hydrogel (e.g., polyacrylamide PA polymerized in a Petri dish as per the right column of p. 1596), wherein the hydrogel comprises genetic material (e.g., E. coli BW25113 as per the right column of p. 1596), wherein the hydrogel comprises pores that allow diffusion of a reagent through the hydrogel, while retaining the genetic material (e.g., cells remain until treated with TCEP as per the right column of p. 1596), wherein the hydrogel comprises a hydrogel polymer precursor and a reversible polymer crosslinker that degrades in the presence of a reducing agent, wherein the hydrogel polymer precursor is polyacrylamide and the reversible polymer crosslinker is N,N'-bis(acrvloyl)cystamine (BACy) (e.g., 2.0 M acrylamide 1 and 0.02 M BACy 7 as per the right column of p. 1596).
Regarding claims 9-10, Tuson discloses soaking the gels in LB broth to absorb nutrients as per the Synthesis of polyacrylamide hydrogels section of the supplementary information.
Modified Double Patenting
Necessitated by Amendments
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
11,085,036 B2
Claims 2 and 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 8-9 of U.S. Patent No. 11,085,036 (the ‘036 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the rejected claims of the present invention would be anticipated and/or rendered obvious by the subject matter in the claims of the reference patent.
Regarding claims 2 and 13-14, the claims of the ‘036 patent disclose a solid support comprising a hydrogel, wherein the hydrogel comprises genetic material, wherein the hydrogel comprises pores that allow diffusion of a reagent through the hydrogel, while retaining the genetic material (e.g., as per claims 1 and 6 of the ‘036 patent), wherein the hydrogel comprises acrylamide/N,N'-bis(acryloyl)cystamine (BACy) (e.g., as per claim 4 of the ‘036 patent).
Regarding claim 9, the claims of the ‘036 patent disclose the above, wherein the reagent comprises enzymes, chemicals, and primers having a size of less than 50 base pairs (e.g., as per claim 8 of the ‘036 patent).
Regarding claim 10, the claims of the ‘036 patent disclose the above, wherein the reagent comprises lysozyme, proteinase K, random hexamers, polymerase, transposase, primers, ligase, catalyzing enzyme, deoxynucleotide triphosphates, buffers, or divalent cations (e.g., as per claim 9 of the ‘036 patent).
Regarding claim 11, the claims of the ‘036 patent disclose the above, wherein the solid support is functionalized with a surface polymer comprising poly(N-(5-azidoacetamidylpentyl) acrylamide- co-acrylamide) (PAZAM) or silane free acrylamide (SFA) (e.g., as per claim 4 of the ‘036 patent).
Regarding claim 12, the claims of the ‘036 patent disclose the above, wherein the hydrogel is a hydrogel bead or a hydrogel layer (e.g., as per claim 1 of the ‘036 patent).
11,999,945 B2
Claims 2-4 and 9-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 12, and 14-17 of U.S. Patent No. 11,999,945 (the ‘945 patent). Although the claims at issue are not identical, they are not patentably distinct from each other because the rejected claims of the present invention would be anticipated and/or rendered obvious by the subject matter in the claims of the reference patent.
Regarding claims 2 and 13-14, the claims of the ‘945 patent disclose a solid support comprising a hydrogel, wherein the hydrogel comprises genetic material, wherein the hydrogel comprises pores that allow diffusion of a reagent through the hydrogel, while retaining the genetic material (e.g., as per claims 1 and 14-15 of the ‘945 patent), wherein the hydrogel comprises acrylamide/N,N'-bis(acryloyl)cystamine (BACy) (e.g., as per claim 12 of the ‘945 patent).
Regarding claim 3, the claims of the ‘945 patent disclose the above, wherein the solid support comprises wells, grooves, or patterns (e.g., as per claim 4 of the ‘945 patent).
Regarding claim 4, the claims of the ‘945 patent disclose the above, wherein the wells are from about 10 µm to about 50 µm in diameter, and wherein the wells are about 0.5 µm to about 1 µm in depth (e.g., as per claim 5 of the ‘945 patent).
Regarding claim 9, the claims of the ‘945 patent disclose the above, wherein the reagent comprises enzymes, chemicals, and primers having a size of less than 50 base pairs (e.g., as per claim 16 of the ‘945 patent).
Regarding claim 10, the claims of the ‘945 patent disclose the above, wherein the reagent comprises lysozyme, proteinase K, random hexamers, polymerase, transposase, primers, ligase, catalyzing enzyme, deoxynucleotide triphosphates, buffers, or divalent cations (e.g., as per claim 17 of the ‘945 patent).
Regarding claim 11, the claims of the ‘945 patent disclose the above, wherein the solid support is functionalized with a surface polymer comprising poly(N-(5-azidoacetamidylpentyl) acrylamide- co-acrylamide) (PAZAM) or silane free acrylamide (SFA) (e.g., as per claim 12 of the ‘945 patent).
Regarding claim 12, the claims of the ‘945 patent disclose the above, wherein the hydrogel is a hydrogel bead or a hydrogel layer (e.g., as per claim 1 of the ‘945 patent).
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Response to Arguments
The 01/06/2026 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.
RE: “Applicant respectfully disagrees and submits that the amended claims are patentably distinct from the claims of each reference application or patent, as none of the claims of the reference application or patent recite the features recited in the amended claims. Accordingly, withdrawal of each rejection is respectfully requested.”
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
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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