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 on August 24, 2026 is acknowledged. Claims 1-19 remain pending. Applicant amended claims 1 and 16.
Response to Arguments
The amendment necessitated the new grounds of rejection set forth below, rendering moot Applicant’s arguments directed to the patentability of the claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Pennington (US 2004/0022475 A1) in view of Rosenberger et al. (“Rosenberger”) (US 6,781,696 B1) and Maleki et al. (“Maleki”) (US 2002/0097401 A1).
With respect to claim 1, Pennington discloses a sensor comprising a fiber optic waveguide having a Bragg grating disposed therein (see [0026]), wherein the waveguide is further functionalized for attachment of analyte receptors (e.g. Protein A, see [0026] and [0029]).
The sensor taught by Pennington differs from the claimed invention in that the waveguide taught by Pennington is not in the form of a whispering gallery mode resonator.
Rosenberger discloses that whispering gallery mode (WGM) resonators have extremely low transmission losses relative to conventional evanescent-wave sensors (see lines 39-65, col. 1). In light of the disclosure of Rosenberger, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the sensor taught by Pennington as a WGM resonator, similar to the sensor taught by Maleki (see Fig. 3A and [0045] disclosing a WGM resonator whose exterior surface is functionalized). If the modification is made, then the modified sensor would comprise a WGM resonator comprising a Bragg grating arranged on at least a portion of the exterior, peripheral surface of the resonator, wherein the resonator is further selectively functionalized for attachment of analyte receptors.
With respect to claims 2 and 4, Pennington discloses that the grating is functionalized for the attachment of analyte receptors (see [0012]-[0013]). Naturally, the grating in the modified biosensor would comprise a grating of analyte receptors directly arranged over a surface of the resonator.
With respect to claim 5, Pennington discloses that the biosensor can be made from a conventional glass known to those of ordinal skill in the art (see [0026]), and Maleki discloses the resonator can be formed from silica (SiO2) (see [0017]). In light of the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the resonator from silica.
Regarding claim 7, the claimed operating wavelength is unspecified. It can presumably correspond to any value, including a value that is twice the period of the grating of the modified Pennington sensor. Consequently, said grating is deemed to anticipate the subject matter of the claim.
With respect to claims 9 and 18, Maleki discloses the provision of separate coatings on the resonator surface to detect different analytes (see [0048]). In light of the disclosure, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided spatially-separated coatings on the perimeter of the resonator of the modified Penington sensor, such that over a half of the perimeter is functionalized (e.g. the entire perimeter is functionalized, but with gaps between individual coatings).
With respect to claim 10, the resonator of the modified sensor would be a ring or a disk resonator (see [0016] of Maleki) embodied as a looped optical waveguide and the sensor would further comprise a coupling mechanism 210A and 210B to access the looped optical waveguide (see Fig. 3A of Maleki).
Regarding claim 11, the resonator of the modified sensor would comprise a closed loop configuration (see Fig. 3A of Maleki). Moreover, absent the claim defining the metes and bounds of the limitation “sections”, a section can correspond to any arbitrary region of the resonator. That said, the resonator would comprise a plurality of “sections”.
Regarding claim 14, the sensor taught by Maleki is part of a sensing system including a light source, a coupler, a detection module and a signal processing module (see Fig. 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have configured the modified Pennington sensor as a system comprising all of the components taught by Maleki such that the system can analyze a sample. Naturally, It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the system with a housing (readout unit) that receives the components/modules of the system, such that the readout unit houses the light source, the sensor, and the signal processing module. The modification would provide protection and facilitate portability of the system.
With respect to claim 15, the system taught by Maleko further includes a laser to optically pump the system (see [0030]), a photodetector (optical detection module, see Figure 2 of Maleki) and processing electronics (processing module comprising a microprocessor, see [0031] and Figure 2 of Maleki). As discussed above (see rejection of claim 14), it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have integrated the modified Pennington sensor into a system with the claimed components such that the system can perform all of the steps of analyte sensing.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Pennington in view of Rosenberger and Maleki as applied to claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 above, and further in view of Little et al. (“Little”) (US 2002/0003925 A1).
With respect to claim 3, Pennington does not disclose the material from which the grating is made. However, it is well-known in the art to form a grating in a waveguide by applying a grating mask on top of the waveguide (see [0008] of Little). That said, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the Bragg grating of the modified Pennigton sensor by applying a mask over the resonator. Moreover, because the grating has a refractive index that differs from the refractive index of the waveguide, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used as the mask a material that is different from the material of the resonator.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Pennington in view of Rosenberger and Maleki as applied to claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 above, and further in view of Mead et al. (“Mead”) (US 2003/0007730 A1).
With respect to claim 6, Pennington does not disclose the material from which the grating is made. However, it is well-known in the art to form a grating in a waveguide by modifying the surface of the waveguide using laser (see abstract of Mead). That said, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the Bragg grating of the modified Pennigton sensor using laser, meaning that the grating would be made from the same material as the resonator, in this case silica (see rejection of claim 5 above).
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Pennington in view of Rosenberger and Maleki as applied to claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 above, and further in view of Matsko et al. (US 2004/0100675 A1).
With respect to claims 8 and 17, the combination of Pennington, Rosenberger and Maleki does not disclose a resonator made from a doped material that provides laser gain.
Matsko teaches a WGM resonator-based sensor (see [0005]). The material from which the resonator is made is doped with active ions (erbium) to achieve the desired laser gain under proper optical pumping (see [0032]). In light of the disclosure of Matsko, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have doped the resonator of the modified Pennington sensor with erbium ions to achieve a desired laser gain, which would improve sensor sensitivity when using laser as a light source.
Claims 12 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Pennington in view of Rosenberger and Maleki as applied to claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 above, and further in view of Yun (US 2019/0296521).
Regarding claims 12 and 19, the combination of Pennington, Rosenberger and Maleki does not teach a WGM resonator fabricated from rare-earth doped aluminum oxide.
Yun teaches a WGM resonator (see [0031]) made from crystals of aluminum oxide doped with rare-earth dopants, such as erbium ions (see [0114]). According to Yun, this material exhibits laser gain (see [0114]). In light of the disclosure of Yun, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the resonator of the modified Pennington sensor from rare-earth doped aluminum oxide to achieve gain when using laser as a light source.
Regarding the limitation “wherein the rare-earth ions provide emission outside absorption bands of water”, this recitation is directed to a property of the rare-earth ions, in this case erbium ions, which is taught by Yun. Consequently, teaching of erbium ions anticipates the recitation.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Pennington in view of Rosenberger and Maleki as applied to claims 1, 2, 4, 5, 7, 9-11, 14, 15 and 18 above, and further in view of Phan Huy et al. (“Phan”) (US 2010/0290062 A1).
With respect to claim 16, the combination of Pennington, Rosenberger and Maleki does not disclose a Bragg grating from PMMA. However, Phan discloses that it is well-known in the art to form waveguides (e.g. optical fibers) in which Bragg gratings are formed from silica or PMMA (see [0036]). In light of the disclosure of Phan disclosing that silica and PMMA are equivalents as a material for forming waveguides, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the resonator and the grating of the modified Pennington sensor from PMMA instead of silica (see rejection of claim 5 above). The modification constitutes substitution of one element for an equivalent, which is considered obvious.
Allowable Subject Matter
Claim 13 is objected to as being dependent upon a rejected base claim, but it would be allowable if it is rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter:
As stated above, the combination of Pennington, Rosenberger and Maleki teaches a sensor of claim 1. Maleki further teaches that the resonator can be in a sample chamber (see Fig. 5 and [0035]). Maleki further teaches that multiple WGM resonators may be used to from a detector array (see [0048]). However, the disclosure of Maleki does not disclose or suggest the arrangement recited in claim 13.
Conclusion
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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