DETAILED ACTION
Status of the Claims
Claims 16 and 57-75 are currently pending.
Claims 1-15 and 17-56 have been canceled by Applicant.
Claims 65-75 have been withdrawn as being drawn to non-elected subject matter (see below).
Claims 16 and 57-64 are examined herein.
The present application is being examined under the pre-AIA first to invent provisions.
Response to Restriction Requirement
Applicant’s election without traverse of Group I (claims 16 and 57-64) in the reply filed on 01/06/2026 is acknowledged.
Claims 65-75 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.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 01/06/2026.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 02/14/2023 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Drawings
Figures 1-3 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated based on the Background of the Invention in the specification. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections – 35 U.S.C. 102
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 pre-AIA 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 –
b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Nikitin et al.
Claims 16 and 57-64 are rejected under 35 U.S.C. 102(b) as being anticipated by Nikitin et al. (Proceedings of SPIE, 2002, Vol. 4578, pp. 126-135).
Regarding claim 16, Nikitin discloses an optical detection apparatus (e.g., based on surface plasmon resonance interferometry, as per the INTRODUCTION section) comprising:
a light source, wherein said light source produces an illumination beam comprising one or more wavelengths (e.g., “tuneable lasers, in particular, semiconductor lasers can be used” as per p. 129);
a reflective substrate comprising capture molecules bound to an uppermost surface (e.g., glass plate as per Fig. 1 and/or 6), wherein the illumination beam is directed onto the reflective substrate (e.g., as per Fig. 1);
a flow cell into which the reflective substrate is incorporated to allow delivery of target molecules to the capture molecules in a fluid environment (e.g., “a continuous flow of the liquid through a cell was produced by the syringe or peristaltic pumps” as per p. 130); and
a photodetector array operably linked to a central processor capable of measuring an intensity of light from the illumination beam reflected from the reflective substrate (e.g., a CCD camera as per Fig. 3-4).
Regarding claim 57, Nikitin discloses the above apparatus, wherein the light source is a laser (e.g., “tuneable lasers, in particular, semiconductor lasers can be used” as per p. 129).
Regarding claim 58, Nikitin discloses the above apparatus, wherein the laser is a tunable laser (e.g., “tuneable lasers, in particular, semiconductor lasers can be used” as per p. 129).
Regarding claim 59, Nikitin discloses the above apparatus, wherein the illumination beam comprises substantially a single wavelength (e.g., as per the paragraph bridging pp. 129-130 and/or with “tuning monochromatic light source” as per p. 131).
Regarding claim 60, Nikitin discloses the above apparatus, wherein the reflective substrate comprises silicon dioxide (SiO2) (e.g., the chip comprises a glass plate as per Fig. 1).
Regarding claim 61, Nikitin discloses the above apparatus, wherein the reflective substrate comprises a plurality of spatially distinct binding locations, each location comprising a plurality of substantially identical capture molecules that specifically bind a single type of target molecule (e.g., as shown in Fig. 6 and/or the 96 wells of the ELISA plate as per p. 132).
Regarding claim 62, Nikitin discloses the above apparatus, comprising one or more objectives to focus the illumination beam and/or imaged light (e.g., collimating lens and optics as per Fig. 3-4).
Regarding claim 63, Nikitin discloses the above apparatus, wherein the photodetector array and central processor operably linked thereto are capable of recording an image comprising pixels, each measuring an intensity of the light reflected at a corresponding physical location on the substrate surface (e.g., the 2048-pixel CCD array fed data into a personal computer as per Fig. 3 and/or a CCD array having 512 x 512 pixels as per p. 132).
Regarding claim 64, Nikitin discloses the above apparatus, wherein the central processor is capable of determining a height change and/or mass of target molecule bound to locations on the substrate surface (e.g., as shown in Fig. 7-8).
Double Patenting
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).
U.S. 7,695,680 B2
Claims 16 and 57-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 7 of U.S. Patent No. 7,695,680 B2 (the ‘680 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 claim 16, the claims of the ‘680 patent disclose an optical detection apparatus comprising:
(i) a light source, wherein said light source produces an illumination beam comprising one or more wavelengths;
(ii) a reflective substrate comprising capture molecules bound to an uppermost surface, wherein the illumination beam is directed onto the reflective substrate;
(iii) a flow cell into which the reflective substrate is incorporated to allow delivery of target molecules to the capture molecules in a fluid environment; and
(iv) a photodetector array operably linked to a central processor capable of measuring an intensity of light from the illumination beam reflected from the reflective substrate (e.g., as per claims 1-2 and 7 of the ‘680 patent).
Regarding claim 57, the claims of the ‘680 patent disclose the above apparatus, wherein the light source is a laser (e.g., as per claim 7 of the ‘611 patent).
Regarding claim 58, the claims of the ‘680 patent disclose the above apparatus, wherein the laser is a tunable laser (e.g., as per claim 7 of the ‘611 patent).
Regarding claim 59, the claims of the ‘680 patent disclose the above apparatus, wherein the illumination beam comprises substantially a single wavelength (e.g., as per claim 1 of the ‘611 patent).
Regarding claim 60, the claims of the ‘680 patent disclose the above apparatus, wherein the reflective substrate comprises silicon dioxide (SiO2) (e.g., as per claim 1 of the ‘680 patent).
Regarding claim 61, the claims of the ‘680 patent disclose the above apparatus, wherein the reflective substrate comprises a plurality of spatially distinct binding locations, each location comprising a plurality of substantially identical capture molecules that specifically bind a single type of target molecule (e.g., as per claim 1 of the ‘611 patent).
Regarding claim 63, the claims of the ‘680 patent disclose the above apparatus, wherein the photodetector array and central processor operably linked thereto are capable of recording an image comprising pixels, each measuring an intensity of the light reflected at a corresponding physical location on the substrate surface (e.g., as per claim 12 of the ‘680 patent).
Regarding claim 64, the claims of the ‘680 patent disclose the above apparatus, wherein the central processor is capable of determining a height change and/or mass of target molecule bound to locations on the substrate surface (e.g., as per claim 12 of the ‘680 patent).
U.S. 9,599,611 B2
Claims 16 and 57-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 9, 11, 15, 19-20, 26 of U.S. Patent No. 9,599,611 B2 (the ‘611 patent) in view of Nikitin et al. (Proceedings of SPIE, 2002, Vol. 4578, pp. 126-135). 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 claim 16, the claims of the ‘611 patent disclose an optical detection apparatus comprising:
(i) a light source, wherein said light source produces an illumination beam comprising one or more wavelengths;
(ii) a reflective substrate comprising capture molecules bound to an uppermost surface, wherein the illumination beam is directed onto the reflective substrate;
(iii) a flow cell into which the reflective substrate is incorporated to allow delivery of target molecules to the capture molecules in a fluid environment; and
(iv) a photodetector array operably linked to a central processor capable of measuring an intensity of light from the illumination beam reflected from the reflective substrate (e.g., as per claims 1, 5, 7, 9, and 11 of the ‘611 patent).
Regarding claim 59, the claims of the ‘611 patent disclose the above apparatus, wherein the illumination beam comprises substantially a single wavelength (e.g., as per claim 26 of the ‘611 patent).
Regarding claim 60, the claims of the ‘611 patent disclose the above apparatus, wherein the reflective substrate comprises silicon dioxide (SiO2) (e.g., as per claim 15 of the ‘611 patent).
Regarding claim 61, the claims of the ‘611 patent disclose the above apparatus, wherein the reflective substrate comprises a plurality of spatially distinct binding locations, each location comprising a plurality of substantially identical capture molecules that specifically bind a single type of target molecule (e.g., as per claims 11 and 19-20 of the ‘611 patent).
Regarding claim 63, the claims of the ‘611 patent disclose the above apparatus, wherein the photodetector array and central processor operably linked thereto are capable of recording an image comprising pixels, each measuring an intensity of the light reflected at a corresponding physical location on the substrate surface (e.g., as per claim 5 of the ‘611 patent).
Regarding claim 64, the claims of the ‘611 patent disclose the above apparatus, wherein the central processor is capable of determining a height change and/or mass of target molecule bound to locations on the substrate surface (e.g., as per claim 5 of the ‘611 patent).
However, the claims of the ‘611 patent are silent as to the limitations of the light source is a tunable laser, as set forth in claims 57-58, and of one or more objectives to focus the illumination beam and/or imaged light, as set forth in claim 62.
Nikitin discloses the use of a tunable laser light and optics to focus the incident or measured beams, as detailed in the rejection under 35 U.S.C. 102(b), above.
It would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to use such tunable laser and focusing optics as per Nikitin in the apparatus as claimed in the ‘611 patent. One of ordinary skill in the art would have been motivated to do so since Nikitin discloses the benefits of tunable monochromatic light sources as per pp. 129 and/or 131.
Given the teachings of the prior art and the level of the ordinary skilled artisan at the time of the applicant’s invention, it must be considered, absent evidence to the contrary, that said skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.
U.S. 10,564,107 B2
Claims 16 and 57-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8-9 of U.S. Patent No. 10,564,107 B2 (the ‘107 patent) in view of Nikitin et al. (Proceedings of SPIE, 2002, Vol. 4578, pp. 126-135). 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 claim 16, the claims of the ‘107 patent disclose an optical detection apparatus comprising:
(i) a light source, wherein said light source produces an illumination beam comprising one or more wavelengths;
(ii) a reflective substrate comprising capture molecules bound to an uppermost surface, wherein the illumination beam is directed onto the reflective substrate; and
(iii) a photodetector array operably linked to a central processor capable of measuring an intensity of light from the illumination beam reflected from the reflective substrate (e.g., as per claim 1 of the ‘107 patent).
However, it is noted that the claims of the ‘107 patent are silent to the limitation of a flow cell into which the reflective substrate is incorporated to allow delivery of target molecules to the capture molecules in a fluid environment, as set forth in claim 16, as well as the limitation of the reflective substrate comprises silicon dioxide (SiO2), as set forth in claim 60, and as well as the limitation that the apparatus comprises one or more objectives to focus the illumination beam and/or imaged light, as set forth in claim 62.
Nikitin discloses the use of flow cell and optics to focus the incident or measured beams, as detailed in the rejection under 35 U.S.C. 102(b), above.
It would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to use a flow cell and focusing optics as per Nikitin in the apparatus as claimed in the ‘107 patent. One of ordinary skill in the art would have been motivated to do so since Nikitin discloses the benefits of using a flow cell, namely, the ability to monitor changes in the biomolecular layer thickness in real time, even during substitution of buffer agents, as per the SURFACE CHEMISTRY AND EXPERIMENTAL RESULTS section on p. 133.
Given the teachings of the prior art and the level of the ordinary skilled artisan at the time of the applicant’s invention, it must be considered, absent evidence to the contrary, that said skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.
Regarding claim 57, the claims of the ‘107 patent disclose the above apparatus, wherein the light source is a laser (e.g., as per claim 2 of the ‘107 patent).
Regarding claim 58, the claims of the ‘107 patent disclose the above apparatus, wherein the laser is a tunable laser (e.g., as per claim 2 of the ‘107 patent).
Regarding claim 59, the claims of the ‘107 patent disclose the above apparatus, wherein the illumination beam comprises substantially a single wavelength (e.g., as per claims 8-9 of the ‘107 patent).
Regarding claim 61, the claims of the ‘107 patent disclose the above apparatus, wherein the reflective substrate comprises a plurality of spatially distinct binding locations, each location comprising a plurality of substantially identical capture molecules that specifically bind a single type of target molecule (e.g., as per claim 3 of the ‘107 patent).
Regarding claim 63, the claims of the ‘107 patent disclose the above apparatus, wherein the photodetector array and central processor operably linked thereto are capable of recording an image comprising pixels, each measuring an intensity of the light reflected at a corresponding physical location on the substrate surface (e.g., as per claim 4 of the ‘107 patent).
Regarding claim 64, the claims of the ‘107 patent disclose the above apparatus, wherein the central processor is capable of determining a height change and/or mass of target molecule bound to locations on the substrate surface (e.g., as per claim 1 of the ‘107 patent).
U.S. 11,275,030 B2
Claims 16 and 57-64 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11,275,030 B2 (the ‘030 patent) in view of Nikitin et al. (Proceedings of SPIE, 2002, Vol. 4578, pp. 126-135). 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 claim 16, the claims of the ‘030 patent disclose an optical detection apparatus comprising:
(i) a light source, wherein said light source produces an illumination beam comprising one or more wavelengths;
(ii) a reflective substrate comprising capture molecules bound to an uppermost surface, wherein the illumination beam is directed onto the reflective substrate; and
(iii) a photodetector array operably linked to a central processor capable of measuring an intensity of light from the illumination beam reflected from the reflective substrate (e.g., as per claim 1 of the ‘030 patent).
However, it is noted that the claims of the ‘030 patent are silent to the limitation of a flow cell into which the reflective substrate is incorporated to allow delivery of target molecules to the capture molecules in a fluid environment, as set forth in claim 16, and of one or more objectives to focus the illumination beam and/or imaged light, as set forth in claim 62, of a photodetector array and central processor operably linked thereto are capable of recording an image comprising pixels, each measuring an intensity of the light reflected at a corresponding physical location on the substrate surface and capable of determining a height change and/or mass of target molecule bound to locations on the substrate surface, as set forth in claims 63-64.
Nikitin discloses the use of flow cell and optics to focus the incident or measured beams, as detailed in the rejection under 35 U.S.C. 102(b), above.
It would have been prima facie obvious to a person of ordinary skill in the art at the time the invention was made to use a flow cell and focusing optics as per Nikitin in the apparatus as claimed in the ‘030 patent. One of ordinary skill in the art would have been motivated to do so since Nikitin discloses the benefits of using a flow cell, namely, the ability to monitor changes in the biomolecular layer thickness in real time, even during substitution of buffer agents, as per the SURFACE CHEMISTRY AND EXPERIMENTAL RESULTS section on p. 133.
Given the teachings of the prior art and the level of the ordinary skilled artisan at the time of the applicant’s invention, it must be considered, absent evidence to the contrary, that said skilled artisan would have had a reasonable expectation of success in practicing the claimed invention.
Regarding claim 57, the claims of the ‘030 patent disclose the above apparatus, wherein the light source is a laser (e.g., as per claims 19-20 of the ‘030 patent).
Regarding claim 58, the claims of the ‘030 patent disclose the above apparatus, wherein the laser is a tunable laser (e.g., as per claims 19-20 of the ‘030 patent).
Regarding claim 59, the claims of the ‘030 patent disclose the above apparatus, wherein the illumination beam comprises substantially a single wavelength (e.g., as per claims 19-20 of the ‘030 patent).
Regarding claim 60, the claims of the ‘030 patent disclose the above apparatus, wherein the reflective substrate comprises silicon dioxide (SiO2) (e.g., as per claims 1 and 19 of the ‘030 patent).
Regarding claim 61, the claims of the ‘030 patent disclose the above apparatus, wherein the reflective substrate comprises a plurality of spatially distinct binding locations, each location comprising a plurality of substantially identical capture molecules that specifically bind a single type of target molecule (e.g., as per claims 1 and 19 of the ‘030 patent).
Conclusion
No claims are allowed.
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/JEREMY C FLINDERS/
Primary Examiner, Art Unit 1684