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 .
Response to Amendment
The amendment filed September 30th, 2025 is acknowledged. Regarding the Office Action mailed July 3rd, 2025:
The rejection set forth under 35 U.S.C. 112(b) is withdrawn in view of the amendments.
Maintained or modified rejections are set forth below, as necessitated by the amendments. Responses to arguments, if necessary, follow their respective rejection sections.
Claim Summary
Claim 1 has been amended. Claims 11 and 14 have been canceled. Claims 1-10, 12-13, and 15-20 are pending. Claims 15-20 are withdrawn from consideration as being drawn to a non-elected invention/species. Claims 1-10 and 12-13 are under examination and discussed in this Office action.
Claim Interpretation - Maintained
Instant claims 7-10 are drawn to an apparatus for gene amplification. MPEP 2114 makes it clear that while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing 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. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987)
In regards to claim 7, the recitation of “…using a reverse transcriptase in the well…” has been interpreted as an intended use limitation. This does not further define the device because it does not claim further structural components of the apparatus.
In regards to instant claim 8, the recitation of “…based on a predetermined activation temperature range of the used reverse transcriptase…” has been interpreted as an intended use limitation. This does not further define the device because it does not claim further structural components of the apparatus.
In regards to instant claim 9, the recitation of “…a viral membrane softening agent is used for the thermal dissolution.” has been interpreted as an intended use limitation. This does not further define the device because it does not claim further structural components of the apparatus.
In regards to instant claim 10, the recitation of “…the viral membrane softening agent comprises at least one of ethanol, isopropyl alcohol, methanol, 1-propanol, 2-propanol, 1- butanol, 2-butanol, triethylamine, dimethylformamide, hexamethylphosphoric triamide, dimethyl sulfoxide, acetone, acetonitrile, pyridine, metal particle, detergent, ethyl acetate, or hexanol…” is a further recitation of the viral membrane softening agent of claim 9, which has been interpreted as an intended use limitation. This does not further define the device because it does not claim further structural components of the apparatus.
Claim Rejections - 35 USC § 103 – Modified – Necessitated by Amendment
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, 5, 7, 9, 10, and 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Yoder (US 20110003699 A1; previously cited), in view of Azevedo et al. (Colony PCR, Methods in Molecular Biology, 2017, 129-139; previously cited) and Trivedi (US20190032114A1; previously cited).
Regarding instant claim 1, Yoder teaches an apparatus for gene amplification, the apparatus comprising: a gene amplification chip comprising a substrate including a well (Page 1, paragraph [0009]: “…may be a platen, otherwise referred to herein as a chip…”; Page 7, paragraph [0087]), the well configured to accept a sample that is loaded into the well (Page 9, paragraph [0108]); the gene amplification chip being configured to: amplify the released genes by heating the sample in the well to a gene amplification temperature (Page 10, paragraph [0115]: “…may be cycled through alternating temperature and subjected, for example, to analysis using Polymerase Chain Reaction (PCR)…”; Page 7, paragraph [0089]: “…the highest temperature used in an assay (typically 95⁰C for PCR).”); a temperature controller (Page 11, paragraph [0134]) configured to control a temperature of the well to be the gene amplification temperature (Page 11, paragraph [0134]; Page 12, paragraph [0143]); and a heat source of an electrical heating element including a Peltier element (Page 11, paragraph [0131]), wherein the temperature controller controls the thermal dissolution temperature and the gene amplification temperature by using the heat source (Page 11, paragraph [0134]). Yoder teaches that the well has a through hole shape allowing fluid flow between the substrate upper surface and the substrate lower surface (Page 2, paragraph [0014]; Figure 16(b), arrows indicating the through hole passes through the PCR chip and allows fluid flow). Yoder teaches that the temperature controller measures a change in temperature due to heating (Page 5, paragraph [0044]).Yoder also teaches on the apparatus being able to perform a PCR assay (Page 4, paragraph [0028]; Page 10, paragraph [0115]). As evidenced by Creative Biogene (Standard PCR Protocol [online]. Creative Biogene, [2025] [retrieved on December 5th, 2025]. Retrieved from: https://www.creative-biogene.com/support/standard-pcr-protocol.html#), standard PCR protocols are as seen in the screenshot below (Page 2, Typical PCR
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Therefore, the apparatus of Yoder is reasonably capable of controlling the temperature of the well to be each of a thermal dissolution temperature and a gene amplification temperature according to elapsed time range. While Yoder does not directly teach controlling the temperature of the well to be a reverse transcription temperature according to an elapsed time, it has already been established that the apparatus of Yoder is capable of performing temperature changes over what is considered a normal PCR cycle. As evidenced by Thermofisher (Reverse Transcription Reaction Setup—Seven Important Considerations [online]. ThermoFisher Scientific, [2025] [retrieved on December 5th, 2025]. Retrieved from: https://www.thermofisher.com/us/en/home/life-science/cloning/cloning-learning-center/invitrogen-school-of-molecular-biology/rt-education/reverse-transcription-setup.html), standard reverse transcription protocol is based on the enzyme used, but can vary between 37⁰C and 55⁰C in temperature and 10-60 minutes in time (Page 4, Table 2). Therefore, the apparatus of Yoder can reasonably control the temperature of the well to be a reverse transcription temperature according to an elapsed time.
Yoder does not teach that the temperature reached for gene amplification is suitable for thermally dissolving a microbe present in a sample by reaching a thermal dissolution temperature, thereby releasing the genes in the microbe.
Azevedo, in a reasonably pertinent field, teaches that the temperature reached for gene amplification is suitable for thermally dissolving a microbe present in a sample (Page 129, Introduction: “Colony PCR is possible if enough cells lyse as a consequence of the high temperature in the initial template denaturation step…”; Page 134, 3.1 E. coli Colony PCR, step 6).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the gene amplification temperature as described in Yoder with the initial denaturation step from Azevedo as a way to thermally dissolve a microbe. Since Azevedo teaches protocols for using an apparatus for gene amplification to directly amplify microbes, which is reasonably pertinent to the temperature capabilities of the thermal cycler of Yoder, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it was known in the art to dissolve a microbe in a sample directly in a reaction vessel to increase speed of acquiring results and decreasing cost of the protocol, while also minimizing sample handling for more sensitive testing (Azevedo, Page 129, Introduction: “The advantage of colony PCR over using purified DNA is mainly speed and cost, as the time consuming DNA extraction step is omitted; but omitting DNA purification and thereby minimizing sample handling can also increase sensitivity if the starting material is limiting …”).
Neither Yoder nor Azevedo teach a heat source comprising an optical heating element including a photothermal film for generating heat by using received light and an electrical heating element including a Peltier element, wherein the photothermal film is disposed on a substrate upper surface, a substrate lower surface, and a partition wall of the well having a through hole shape (emphasis added by Examiner). Neither Yoder nor Azevedo teach wherein the temperature controller measures a change in temperature of the well due to heat generated by the photothermal film.
Trivedi, in the same field of endeavor, teaches a substrate for PCR, the substrate having an optically excitable heat generation layer that is heated upon exposure to optical energy (e.g. optical heating element including a photothermal film for generating heat by using received light) deposited on the top and bottom surfaces (Page 25, paragraph [0432]; Figure 1A inset, reference character 103). This heat generation layer can be a polymer or plastic film (e.g. photothermal film) (Page 25, paragraph [0435]). Trivedi also teaches that the optically excitable heat generation layer can be paired with a supplementary heating device, such as a thermoelectric device like a Peltier cooler (Page 27, paragraph [0442]). Trivedi also teaches wells are coated with the same material used in the heat generation layer (Page 25, paragraph [0432]), thus it would have been obvious that the photothermal film is additionally disposed on the partition wall of the well. Trivedi teaches a temperature cycling system (e.g. temperature controller) that measures a change in temperature of a reaction zone due to heat generated by the heat generation layer (e.g. photothermal film as established above) with thermal sensors (Page 15, paragraph [0296]) and controls the temperature of the well to be each of a thermal dissolution temperature and a gene amplification temperature according to elapsed time (e.g. a PCR assay) (Page 15, paragraph [0296]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the apparatus of Yoder, in view of Azevedo, with the optical heating element of Trivedi. Since both Yoder and Trivedi are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because having a supplementary heating device can improve heating performance (Trivedi, Page 27, paragraph [0442]). Furthermore, one of ordinary skill in the art would have been motivated to add the heat generation layer of Trivedi to the partition walls of wells for the purpose of increasing surface area for quicker heating (Page 28, paragraph [0444]). Regarding the temperature controller measuring changes in temperature of the well due to heat generated by the photothermal film, one of ordinary skill in the art would have been motivated to measure the heat in the well due to the heat generated by the photothermal film because this allows for reaching and maintaining proper temperatures during the PCR assay (Page 15, paragraph [0296]).
Regarding instant claim 5, Yoder teaches an optical device configured to, while the gene amplification is being performed in the well or after the gene amplification is complete, measure an optical signal that is scattered or reflected from the sample in the well (Page 12, paragraph [0141]: “During fluorescence imaging for example, the fluorescence from each of the samples in each through-hole may then be simultaneously captured by the camera 235 as a digital image.”); and a processor configured to detect the amplified genes by analyzing the measured optical signal (Page 12, paragraph [0141]: “Intensity measurements for each sample can then be generated and the intensities processed by analysis software to generate desired data.”).
Regarding instant claim 7, with respect to the above claim interpretation, Yoder teaches the gene amplification chip is further configured to, in response to the microbe being RNA virus, reverse transcribe RNA (Page 16, paragraph [0190]), that is released after the RNA virus is thermally dissolved in the well (see claim 1 rejection for discussion on dissolution temperatures). The apparatus of Yoder inherently possesses the functionally defined limitations of wherein a reverse transcriptase is used in the well. Yoder teaches a gene amplification chip comprising a substrate including a well (Page 7, paragraph [0087]), the well configured to accept a sample that is loaded into the well (Page 9, paragraph [0108]). Because the well is inherently able to accept a sample, it would necessarily be able to accept a reverse transcriptase for use in reverse transcription of RNA.
Regarding instant claim 9, with respect to the above claim interpretation, the apparatus of Yoder inherently possesses the functionally defined limitations of wherein a viral membrane softening agent is used for the thermal dissolution. Yoder teaches a gene amplification chip comprising a substrate including a well (Page 7, paragraph [0087]), the well configured to accept a sample that is loaded into the well (Page 9, paragraph [0108]). Because the well is inherently able to accept a sample, it would necessarily be able to accept a viral membrane softening agent for use in thermal dissolution.
Regarding instant claim 10, with respect to the above claim interpretation, the apparatus of Yoder inherently possesses the functionally defined limitations wherein the viral membrane softening agent comprises at least one of ethanol, isopropyl alcohol, methanol, 1-propanol, 2-propanol, 1- butanol, 2-butanol, triethylamine, dimethylformamide, hexamethylphosphoric triamide, dimethyl sulfoxide, acetone, acetonitrile, pyridine, metal particle, detergent, ethyl acetate, or hexanol. This recitation is a list of options of the viral softening agents as described in claim 9. Yoder teaches a gene amplification chip comprising a substrate including a well (Page 7, paragraph [0087]), the well configured to accept a sample that is loaded into the well (Page 9, paragraph [0108]). Because the well is inherently able to accept a sample, it would necessarily be able to accept a viral membrane softening agent for use in thermal dissolution.
Regarding instant claim 12, Yoder teaches the gene amplification comprises polymerase chain reaction (PCR) amplification (Page 15, paragraph [0173]).
Regarding instant claim 13, Yoder teaches the substrate includes in a range of one to a hundred thousand wells (Page 12, paragraph [0141]: “…from 100 to greater than 1600 through-holes…”), each well being configured to accept, thermally dissolve, and amplify a sample respectively introduced into each well (see claim 1 rejection for discussion on dissolution temperatures; Page 12, paragraph [0143]).
Claims 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over Yoder (US 20110003699 A1; previously cited), Azevedo (Colony PCR, Methods in Molecular Biology, 2017, 129-139; previously cited), and Trivedi (US20190032114A1; previously cited), as applied to claims 1, 5, 7, 9, 10 and 12-14 above, and further in view of Hunter (US6387331B1; previously cited).
Regarding instant claim 2, Yoder teaches that a gene amplification chip has wells (Page 7, paragraph [0087]) and that a sample can contain a microbe (Page 18, paragraph [0206]).
Yoder does not teach that the diameter of a well is larger than or equal to a diameter of the microbe, and is less than or equal to 10000 times the diameter of the microbe.
Hunter, in the same field of endeavor, teaches that the diameter of a well is larger than or equal to a diameter of the microbe, and is less than or equal to 10000 times the diameter of the microbe (Page 12, column 4, lines 32-35).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wells of Yoder with the diameter of the wells of Hunter. Since both Yoder and Hunter are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because this well diameter is of characteristic dimensions for a well on a chip (e.g. platen; Page 12, column 4, lines 32-35). It is also noted that the courts have found that “[i]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the claimed range is obvious over the cited prior art.
Regarding instant claim 3, Yoder teaches that a gene amplification chip has wells (Page 7, paragraph [0087]).
Yoder does not teach that the diameter and a depth of the well is in a range of 1 nm to 1000 µm.
Hunter, in the same field of endeavor, teaches that the diameter and a depth of the well is in a range of 1 nm to 1000 µm (e.g. platen; Page 12, column 4, lines 32-35).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wells of Yoder with the diameter of the wells of Hunter. Since both Yoder and Hunter are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because these well measurements are of characteristic dimensions for a well on a chip (e.g. platen; Page 12, column 4, lines 32-35). It is also noted that the courts have found that “[i]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the claimed range is obvious over the cited prior art.
Regarding instant claim 4, Yoder teaches that a gene amplification chip has wells.
Yoder does not teach wherein a volume of the well is 1 nL or less.
Hunter, in the same field of endeavor, teaches that a volume of the well is 1 nL or less (Page 12, column 4, lines 35-37, where ~10-7 cm3 is equal to 0.1nL).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the wells of Yoder with the volume of wells of Hunter. Since both Yoder and Hunter are in the same field of endeavor, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because the characteristic dimensions for a well on a microarray result in a well volume of ~10-7 cm3 (e.g. 0.1nL) or greater (Page 12, column 4, lines 32-37). It is also noted that the courts have found that “[i]n the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, the claimed range is obvious over the cited prior art.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yoder (US 20110003699 A1; previously cited), Azevedo (Colony PCR, Methods in Molecular Biology, 2017, 129-139; previously cited), and Trivedi (US20190032114A1; previously cited), as applied to claims 1, 5, 7, 9, 10, and 12-14 above, and further in view of Xu (Robust Colony PCR from Multiple E. coli Strains using OneTaq® Quick-Load® Master Mixes, New England Biolabs, [2018] [retrieved on November 7th, 2024]. Retrieved from: https://www.neb-online.de/wp-content/uploads/2018/01/DNA_AMP_ColonyPCR_1801_D_LowRes.pdf; previously cited).
Regarding instant claim 6, Yoder teaches a time controller configured to control a time (Page 14, paragraph [160]: “A control element, which may include, without limitation, a microprocessor and associated software, may then adjust the heating and cooling time or power as a function of the temperature measurements.”).
Yoder does not teach the time of thermal dissolution (see claim 1 rejection for discussion on dissolution temperatures) to be 10 minutes or less, and a time of the gene amplification to be 120 minutes or less.
Xu, in a reasonably pertinent field, teaches the time of thermal dissolution to be 10 minutes or less, and a time of the gene amplification to be 120 minutes or less (Page 1, General Protocol, step 5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the time controller of Yoder with the times of Xu. Since Xu teaches a gene amplification protocol for a microbe, which is reasonably pertinent to a gene amplification apparatus, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it was known in the art to program a gene amplification apparatus with a cycling program with specific times for appropriate gene amplification (Xu, whole document). It is also noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Thus, the claimed range of times for thermal dissolution and gene amplification merely represent routine optimization of the values of the cited prior art.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Yoder (US 20110003699 A1; previously cited), Azevedo (Colony PCR, Methods in Molecular Biology, 2017, 129-139; previously cited), and Trivedi (US20190032114A1; previously cited), as applied to claims 1, 5, 7, 9, 10, and 12-14 above, and further in view of Invitrogen I (Protocol for 1-step RT-qPCR, Invitrogen, [2021] [retrieved on November 7th, 2024]. Retrieved from: https://assets.thermofisher.com/TFS-Assets/BID/Reference-Materials/1-step-rt-qpcr-protocol.pdf; previously cited).
Regarding instant claim 8, with respect to the above claim interpretation, Yoder teaches wherein the temperature controller is further configured to control the thermal dissolution temperature of the well (see claim 1 rejection for discussion on dissolution temperatures; Page 11, paragraph [0134]; Page 12, paragraph [0143]); and the apparatus for the gene amplification further comprises a time controller configured to control a time for reverse transcription (Page 14, paragraph [160]: “A control element, which may include, without limitation, a microprocessor and associated software, may then adjust the heating and cooling time or power as a function of the temperature measurements.”). The apparatus of Yoder inherently possesses the functionally defined limitations wherein the temperature is based on a predetermined activation temperature range of the used reverse transcriptase. Yoder teaches a temperature controller (Page 11, paragraph [0134]) configured to control a temperature of the well to be the gene amplification temperature (Page 11, paragraph [0134]; Page 12, paragraph [0143]). Because the temperature controller is inherently able to control the temperature of the well to be the gene amplification temperature, it would necessarily be able to reach a temperature based on a predetermined activation temperature range of the used reverse transcriptase.
Yoder does not teach the reverse transcription time to be 20 minutes or less.
Invitrogen I teaches a reverse transcription time of 20 minutes or less (Invitrogen I, Page 3, reaction runtime table).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the time controller of Yoder with the time of Invitrogen I. Since Invitrogen I teaches a protocol reverse transcription of RNA, which is reasonably pertinent to a gene amplification apparatus, one of ordinary skill in the art would combine the two teachings with a reasonable expectation of success. One of ordinary skill in the art would have been motivated to make this modification because it was known in the art to program a gene amplification apparatus with a cycling program with specific times for appropriate reverse transcription (Invitrogen I, whole document). It is also noted that the courts have found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Thus, the claimed range of times for reverse transcription merely represent routine optimization of the values of the cited prior art.
Response to Arguments
Applicant's arguments filed September 30th, 2025 have been fully considered but they are not persuasive.
The Applicant first summarizes support for the amendment detailing wells having a through hole shape allowing fluid flow between the substrate upper surface and substrate lower surface, as well as the Examiner’s previous statement regarding the teachings of the previously cited references (Page 10 of the Remarks filed September 30th, 2025). The Applicant argues that all motivations relied upon by the Examiner relate to thermal control of the well, wherein Trivedi uses a closed well structure and a light source heating photothermal material through a supporting transparent substrate (Page 10 of the Remarks filed September 30th, 2025). The Applicant argues that the photothermal feature does not operate in a through hole structure and cannot be achieved without substantial redesign of the reference (Page 10 of the Remarks filed September 30th, 2025). The Applicant further cites aspects of Trivedi that teach the well is not a through hole and is instead closed by a heating surface and passivation film, and removal of the heating surface would completely undermine the principle of operation of Trivedi (Page 10 of the Remarks filed September 30th, 2025). The Applicant further cites aspects of Trivedi that teach the heating pattern closes the bottom surface of the well, and the inclusion of multiple heating surfaces close the bottom of the well and provide increased surface area of the embodiment (Page 11 of the Remarks filed September 30th, 2025). The Applicant argues that the Examiner’s basis for combination would teach one skilled in the art to maintain a bottom pattern of the well for increased surface area, and the motivation to modify would lead to a closed well with a patterned bottom (Page 11 of the Remarks filed September 30th, 2025). The Applicant argues that any intermediate state of Trivedi which may include a through hole ultimately becomes a closed well when thermal elements are added, which cannot support the rejection (Page 12 of the Remarks filed September 30th, 2025). The Applicant argues that at best, the thermal film is on a top surface of a heating pattern or a bottom surface of a well wall, with no basis to cover a top surface of a substrate, a bottom surface of a substrate, and a partition wall (Page 12 of the Remarks filed September 30th, 2025). Finally, the Applicant argues that the currently cited references fail to teach the additional clarifying features of the temperature controller (Page 12 of the Remarks filed September 30th, 2025).
In response to these arguments, the Examiner would like to note that given the lack of antecedent basis cited in the previous Office Action, the well of claim 1 was interpreted as a generic well with no aspects related to a through hole. As cited in previous Office Actions, Yoder does teach a well having a through-hole shape allowing fluid flow between the substrate upper surface and the substrate lower surface, which has been again cited above now that proper antecedent basis is established. It is further noted that based on the teachings of Trivedi, a photothermal film may be deposited on the top of a substrate, bottom of a substrate, and well surfaces, as cited above. While the shape of the substrate and the well of Trivedi may be different from that instantly claimed, this does not negate that it is taught the photothermal film may be on many surfaces of the substrate and well, with the motivation that having photothermal film deposited on more surfaces would increase the heating surface area to capture light for quicker heating. Furthermore, the Examiner would like to note that the bottom patterning taught by Trivedi is merely a suggestion to provide more surface area and is not a requirement. As stated in paragraph [0432] of Trivedi, simply adding the photothermal film to the surface of the wells can increase surface area. In another embodiment of Trivedi, a substrate may have through-holes with photothermal film deposited on the through hole walls and around the substrate (Page 29, paragraph [0449]). Therefore, having a bottom to a well is not required and photothermal film may still be used. Given these considerations, the arguments provided by the Applicant are not persuasive.
Conclusion
All claims are rejected.
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.
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/ALLISON E SCHLOOP/Examiner, Art Unit 1683
/ANNE M. GUSSOW/Supervisory Patent Examiner, Art Unit 1683