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 .
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.
DETAILED ACTION
This is an AIA application filed December 17, 2021.
The effective filing date of this AIA application is seen as July 24, 2017, the date of the earliest priority application (United States provisional patent application serial number 62/536,268) for any claims which are fully supported under the first paragraph of 35 U.S.C. 112 by the provisional application.
The present application also claims priority to and is also related to:
U.S. patent application number 16/042,968 filed July 23, 2018, U.S. Patent No. 11,237,326.
The present application is also related to:
PCT international application number PCT/US18/43333 filed July 23, 2018.
The claims filed April 27, 2026 are entered, currently outstanding, and subject to examination.
This action is in response to the filing of the same date.
The current status and history of the claims is summarized below:
Last Amendment/Response
Previously
Amended:
1, 11, 19, and 20
1, 8, 11, 19, & 20
Cancelled:
none
none
Withdrawn:
none
2-7, 12-18, & 21
Added:
none
2-21
Claims 1-21 are currently pending. Claims 1, 8-11, 19, and 20 are currently outstanding.
Regarding the last reply:
Claims 1, 11, 19, and 20 were amended.
No claims were cancelled.
No claims were withdrawn.
No claims were added.
Claims 1, 8-11, 19, and 20 are currently outstanding and subject to examination.
This is a final action and is the sixth action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Specification
Applicant must provide the same terminology/vocabulary/phrasing in the specification that is present in the claims. At least one term or phrase is missing from the specification present in the claim(s).
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o).
Correction is required as the following amendment(s)/text in the claims find(s) no antecedent in the specification.
Claim(s)
Antecedent Missing For
1, 19, and 20
"the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors"
As set forth in MPEP § 608.01(o):
The meaning of every term used in any of the claims should be apparent from the descriptive portion of the specification with clear disclosure as to its import; and in mechanical cases, it should be identified in the descriptive portion of the specification by reference to the drawing, designating the part or parts therein to which the term applies. A term used in the claims may be given a special meaning in the description. See MPEP § 2111.01 and § 2173.05(a).
Usually the terminology of the original claims follows the nomenclature of the specification, but sometimes in amending the claims or in adding new claims, new terms are introduced that do not appear in the specification. The use of a confusing variety of terms for the same thing should not be permitted.
. . . While an applicant is not limited to the nomenclature used in the application as filed, he or she should make appropriate amendment of the specification whenever this nomenclature is departed from by amendment of the claims so as to have clear support or antecedent basis in the specification for the new terms appearing in the claims. This is necessary in order to insure [sic, ensure] certainty in construing the claims in the light of the specification, Ex parte Kotler, 1901 C.D. 62, 95 O.G. 2684 (Comm’r Pat. 1901). See 37 CFR 1.75 and MPEP §§ 608.01(i), § 1302.01.
Consequently, identity between terms and phrases in the specification and claims is preferred and is seen as mandatory to ensure “certainty in construing the claims in the light of the specification”.
Further, under 37 C.F.R. § 1.121(e) regarding disclosure consistency:
The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
Examiner considers direct correspondence between the specification and the claims to be important with respect to determining the scope of the claims.
Examiner strongly urges Applicant to review its claims with a fine-toothed comb and scrutinize them for any discrepancies between claim language and language that is used in the written description/specification as originally filed. Applicant is responsible for what it drafts. Discrepancies may be interpreted to Applicant’s detriment.
Note should be taken that the antecedent basis requirement is distinct and separate from the description requirement. Adequate disclosure for purposes of description does not ensure antecedent basis.
From examiner’s perspective, what is said in the claims must be said and must be present in the specification.
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 April 27, 2026 has been entered.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions as defined by MPEP § 2111.01(IV) are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s). Per above, such special definitions must conform to the requirements of MPEP § 2111.01(IV).
To date, Applicant has provided no indication of special definitions.
Claim Rejections - 35 USC § 103
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 of this title, 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.
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, 8-11, 19, and 20 are rejected under 35 U.S.C. § 103 as being unpatentable over U.S. Patent Application Publication No. 2015/0141267 of Rothberg et al. (Rothberg) in view of U.S. Patent Application Publication No. 2008/0111994 of Sogard (Sogard).
WITH RESPECT TO CLAIM 1, Rothberg discloses an integrated device (abstract, "An integrated device includes multiple pixels with sample wells configured to receive a sample", Figs. 12 series) comprising:
a plurality of sample wells (sample well 12-101) arranged on a first layer (conductive material 12-103) of the integrated device,
wherein individual sample wells of the plurality of sample wells are configured to receive a sample labeled with at least one fluorescent marker configured to emit emission light in response to excitation light (the wells are seen as so configured, see ¶ 154 et seq.);
a plurality of photodetectors arranged on a second layer of the integrated device and positioned to receive photons of emission light emitted from the plurality of sample wells (¶ 8, "at least one sensor configured to detect a spatial distribution of at least a portion of the radiation pattern", ¶ 377, "a sensor may comprise at least one, two, three, or four photodetectors.” ¶ 368, "sub-sensor 12-111 through 12-114 of the pixel"),
wherein individual sample wells of the plurality of sample wells align with at least one photodetector of the plurality of photodetectors (Fig. 12-1A, e.g.); and
wherein a signal generated by the at least one photodetector indicates detection of photons of emission light (¶ 421, "For example, the control system may control the excitation source to emit and direct light towards the sample wells of the integrated device; control the sensors to allow detection of emission light from one or more samples in the sample wells; and analyze signals from the sensors to identify, e.g., by analyzing the spatial distribution of the emission energy, the sample present in a sample well.").
Rothberg as set forth above does not disclose:
at least one photonic structure positioned between an individual sample well and its respective at least one photodetector,
the at least one photonic structure configured to attenuate the excitation light relative to the emission light,
wherein the at least one photonic structure includes at least one spatial filter including a first spatial filter and a second spatial filter,
the first spatial filter located between the second spatial filter and a respective sample well, and
the second spatial filter located between the first spatial filter and the one photodetectors
wherein the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors.
Sogard discloses an autofocus methods and devices for lithography that includes (Fig. 5):
dual spatial filters (525, 530) spaced apart between transmitter/emitter (AF beam 522 via interferometer 510) and receiver/target (generally, reticle 550).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to a spatial filter configuration along the lines of Sogard in a system according to Rothberg as set forth above in order to control transmission and/or reflection of light. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a sample detection system for sample wells) would occur as each element merely performs the same function in combination as it does separately. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A). Current Office policy regarding the determination of obviousness is set forth in the Federal Register notice at 89 Fed. Reg. 14449 (Feb. 27, 2024).
Further, the combination would then provide:
at least one photonic structure (the combined photonic/filter structure of Sogard) positioned between an individual sample well and its respective at least one photodetector,
the at least one photonic structure configured to attenuate the excitation light relative to the emission light,
wherein the at least one photonic structure includes at least one spatial filter (per above) including a first spatial filter (filter 530) and a second spatial filter (filter 525),
the first spatial filter (530) located between the second spatial filter (525) and a respective sample well (of Rothberg per the combination), and
the second spatial filter located between the first spatial filter and the one photodetector (by necessity per the configuration above),
wherein the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors (the filters of Sogard are seen as so configured. All filters attenuate light if the light is not already filtered. See examiner’s response to Applicant’s arguments, below. See “same product/same features”, below.).
Applicant should note that the grounds here used to reject claim 1 are the same as those used to reject claim 1 in the final action of December 22, 2023. The same structures and relationships are in place in claim 1 as amended as they were before.
For product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Rothberg in view of Sogard as set forth above as set forth above provides the structure of claim 1, the combination is seen as also providing the same claimed properties or functions of claim 1.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 8, Rothberg in view of Sogard as set forth above discloses the integrated device of claim 1, including one wherein
the at least one spatial filter having at least one opening that overlaps with at least a portion of the plurality of sample wells and is configured to block transmission of at least a portion of the excitation light.
Per the combination set forth in claim 1, above, this is how the Sogard dual spatial filters (525, 530) would operate in conjunction with the structures of Rothberg.
With respect to claim 9, Rothberg in view of Sogard as set forth above discloses the integrated device of claim 8, but not one wherein
the at least one spatial filter includes at least one metal layer configured to block transmission of at least a portion of the excitation light.
Rothberg discloses metallization in a variety of forms accompanying apertures.
Fig. 13-1A shows conductive vias 13-132 with metallized conductive traces 13-134. “Electrical contacts to the wells may be made through conductive traces 13-134 formed at a first or subsequent metallization level and through conductive vias 13-132."
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to use a sensor along the lines of Figs. 13-1A/B of Rothberg in a system according to Rothberg in view of Sogard as set forth above in order to provide optical separation and sensing. This provides one rationale to combine the references.
Another completely independent and separately sufficient rationale arises as follows. In making the combination (above), prior art elements (listed above) are combined according to known methods (per the references) to yield predictable results (a sample detection system for sample wells) would occur. MPEP § 2141(III). This additional rationale is a sufficient, a complete, and an explicitly-recognized rationale to combine the references and conclude that the claim is obvious both under the controlling KSR Supreme Court case and MPEP § 2141(III)(A).
Further, the combination would then provide:
the at least one spatial filter includes at least one metal layer configured to block transmission of at least a portion of the excitation light.
With respect to claim 10, Rothberg in view of Sogard as set forth above discloses the integrated device of claim 9, including one wherein
the integrated device further comprises circuitry that includes the at least one metal layer,
wherein the circuitry is electrically coupled to at least one photodetector of the plurality of photodetectors.
Rothberg, Figs. 13-1A/B per above/claim 9. ¶¶ 377 et seq.
With respect to claim 11, Rothberg in view of Sogard as set forth above discloses the integrated device of claim 9, including one wherein
the first spatial filter is positioned proximate the plurality of sample wells and the second spatial filter is positioned proximate the plurality of photodetectors.
Per claim 1 above, Sogard provides such dual spatial filters.
With respect to claim 19, Rothberg in view of Sogard as set forth above discloses a method of molecular identification comprising:
inserting a sample into at least some of a plurality of sample wells arranged on or in a first layer of an integrated device;
provide to the at least some of the plurality of sample wells excitation light causing the sample to emit emission light;
attenuating excitation light relative to emission light using at least one photonic structure,
the at least one photonic structure including at least one spatial filter including a first spatial filter and a second spatial filter,
the first spatial filter located between the second spatial filter and a respective sample well, and
the second spatial filter located between the first spatial filter and one photodetector, wherein the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors; and
receiving by at least some of a plurality of photodetectors arranged in a second layer of the integrated device the emission light,
in order to identify molecular information in the sample.
Use of the device according to claim 1, above, would naturally result in the method of molecular identification of claim 19.
With respect to claim 20, Rothberg in view of Sogard as set forth above discloses a method of forming an integrated device comprising:
forming a plurality of sample wells arranged on a first layer of the integrated device,
wherein individual sample wells of the plurality of sample wells are configured to receive a sample labeled with at least one fluorescent marker configured to emit emission light in response to excitation light;
forming a plurality of photodetectors arranged on a second layer of the integrated device and positioned to receive photons of emission light emitted from the plurality of sample wells,
wherein individual sample wells of the plurality of sample wells align with at least one photodetector of the plurality of photodetectors;
and forming at least one photonic structure positioned to align on a common axis with an individual sample well and its respective at least one photodetector,
the at least one photonic structure configured to attenuate the excitation light relative to the emission light, wherein a signal generated by the at least one photodetector indicates detection of photons of emission light,
the at least one photonic structure including at least one spatial filter including a first spatial filter and a second spatial filter,
the first spatial filter located between the second spatial filter and a respective sample well, and
the second spatial filter located between the first spatial filter and the one photodetector,
wherein the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors.
Construction of the device set forth in claim 1 would naturally result in the method of forming of claim 20.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but they are not persuasive and the claim rejections are not rebutted.
Applicant argues that:
The Office Action (p. 6) concedes that Rothberg does not disclose "at least one photonic structure...wherein the at least one photonic structure includes at least one spatial filter including a first spatial filter and a second spatial filter". The Office Action (p. 7) also alleges that Sogard cures this deficiency by describing dual spatial filters 525, 530. However, Rothberg and Sogard, alone or in combination, do not disclose the above-quoted language.
Sogard states that the "[s]patial filter 530 includes a pinhole and a slit. The pinhole transmits reflected light, and the slit passes an order of diffracted light (e.g., 1st-order diffracted light)" (Sogard 81). The Office Action (p. 6-7) alleges that the spatial filter 530 corresponds to claimed second spatial filter 4-232. The spatial filter 530 of Sogard is designed to pass both reflected light and a selected diffraction order simultaneously, which necessitates a pass geometry with a slit and a pinhole.
In contrast, the claimed second spatial filter 4-232 has a single opening 4-240 configured to "allow for reduced blocking of forward scattered light" (Present Specification 110; Emphasis supplied). Specifically, the opening 4-240 of the second spatial filter 4-232 is described to be "suitably sized, shaped, and positioned with respect to corresponding sample wells and photodetectors in the integrated device in a manner that improves collection of emission light by the photodetectors and/or reduces the amount of excitation light incident to the photodetectors" (Present Specification 108). Sogard's spatial filter 530 is designed to control back reflected /back diffracted light, and the slit of the spatial filter 530 is specifically configured to pass a selected order of back-diffracted light to interferometer 520 (Sogard 81; FIG. 5). FIGs. 4-1B-F of the present specification show top planar views of example pixels 1-110 with example spatial filter openings 4- 240b-f, illustrating the lack of a slit.
Thus, the spatial filter 530 of Sogard serves a structurally and functionally distinct purpose: isolating diffraction orders from a periodically patterned reticle surface. A person of ordinary skill in the art would have no motivation to substitute or equate the spatial filter 530 with the claimed second filter 4-232, as there would be no benefit to the claimed integrated device by including a filter configured to allow light to pass through the second filter 4-232 in two, opposite directions.
Examiner response: Claim 1 is amended to include, “wherein the first and second spatial filters are configured to attenuate forward scattered light that reaches the plurality of photodetectors”. Pinhole and/or slit filters inherently attenuate light incoming to the filter. Examiner sees such incoming light as “forward scattered light” as light incoming to such a filter is generally of a scattered nature (unless it’s a laser, which is not present here) and is moving forward in order to reach the filter in front of it.
As such, all filters are seen as "configured to attenuate forward scattered light". In this case, as such light is being illuminate the photodetectors, the first and second filters in the combination of Rothberg in view of Sogard as set forth above "are configured to attenuate forward scattered light that reaches the plurality of photodetectors".
Applicant seems to argue a portion of the specification that does not align with the claim amendments. Allowing for "reduced blocking of forward scattered light" indicates less attenuation as attenuation and blocking are similar things. The claim amendment is directed to more attenuation of the signal, and not less.
Applicant's arguments with regards to the remaining claims all rely upon the arguments set forth above. Consequently, these remaining arguments as seen as being addressed by the examiner's corresponding remarks.
Applicant’s remaining 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. As such, the examiner makes no remarks regarding them.
Conclusion
Applicant’s publication US 20220113469 A1 of April 14, 2022 was previously cited.
No new art is cited.
This is a request for continued examination/RCE of the current application. All claims are drawn to the same invention claimed in the earlier application and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
June 24, 2026
Prosecution Insights