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 .
Priority
This application 17/763,002 filed on 03/23/2022 is a 371 national phase of PCT/ EP2020/076410 filed on 09/22/2020, and claims the benefit of European Union Patent Application Serial No. 19199001.9, filed on 09/23/2019.
The priority date of claim 1 and its dependent claims 2-5 is determined to be 09/23/2019, the filing date of European Union Patent Application Serial No. 19199001.9.
The priority date of claim 10 and its dependent claims 11-14 is determined to be 09/23/2019, the filing date of European Union Patent Application Serial No. 19199001.9.
Status of Claims
Applicant’s amendments to claims filed 10/23/2025 in response to the Non-Final Rejection mailed 07/24/2025 are acknowledged.
Claims 1-3, 6, 10-13 and 15 are amended.
Claims 1-20 are pending and claims 1-5 and 10-14 are under examination.
Response to Remarks filed 10/23/2025
The amendments and arguments presented in the papers filed 10/23/2025 ("Remarks”) have been thoroughly considered. The issues raised in the Office action dated 07/24/2025 listed below have been reconsidered as indicated.
a) Deficiencies in the sequence disclosures have been remedied and objections are withdrawn in view of amendments to the specification.
b) The objections to the specification regarding the use of trade names or marks are withdrawn in view of the amendments to the specification.
c) The 35 USC 112(b) indefiniteness rejections of claims 1-5 and 10-14 have been revised and maintained in view of the amendments to claims.
d) The Non-Statutory Double Patenting Rejection over copending Application No. 17/905,482 is withdrawn in view of the accepted Terminal Disclaimer.
New and modified grounds of rejection necessitated by amendment are detailed below and this action is made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-5 and 10-14 remain/are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Amended claim 1 filed on 10/23/2025 recites the limitations “each probe consists, from 5' to 3' or from 3' to 5’, of 1) a first flanking region... which anneals with a region directly next to a specific DNA sequence of interest... 2) a sequence complementary to the specific DNA sequence of interest, which comprises at least one short tandem repeat and which anneals with the short tandem repeat region within the sample...and 3) the second flanking region...”.
It is noted that “consists of” recited in the preamble of claim 1 is a close language whereas “comprises” recited after “consists of” in the body of claim 1 is an open language. Accordingly, claim 1 as written, recites limitations 1), 2) and 3) under the close language “consists of”, however, each of the limitations 1), 2) and 3) could comprise additional unspecified nucleotide sequences. Therefore, the metes and bounds of claim 1 cannot be determined.
Claims 2-5 and 10-14 depend from claim 1.
Claim Interpretation
Claim 1 recites the limitation “each probe consists, from 5' to 3' or from 3' to 5', of 1) a first flanking region, which comprises nucleotides and --- which contains more nucleotides than a second flanking region --- and the second flanking region, which comprises at least one nucleotide”. Under the broadest reasonable interpretation the probe is considered to have a first flanking region comprising two or more nucleotides, and a second flanking region comprising one or more nucleotides.
Claim 10 recites the limitation “each probe, from 5' to 3' or from 3' to 5', consists of: a first flanking region comprising nucleotides -- and a second flanking region comprising at least one nucleotide, wherein the second flanking region contains fewer nucleotides than the first flanking region”. Under the broadest reasonable interpretation the probe is considered to have a first flanking region comprising two or more nucleotides, and a second flanking region comprising one or more nucleotides.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1, 4, 10, and 13 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Halpern et al. (An STR Melt Curve Genotyping Assay for Forensic Analysis Employing an Intercalating Dye Probe FRET*. 2011. Journal of Forensic Sciences. 56(1): 36-45) in view of Mao et al. (The mechanism and regularity of quenching the effect of bases on fluorophores: the base-quenched probe method. 2018. 143(14): 3292-3301).
These rejections are modified as necessitated by amendments to the claims of the instant application.
Regarding claim 1, Halpern teaches fluorophore-labeled allele-specific probes for short tandem repeats (STRs) (p. 1, Abstract) comprising: 1) an anchor flank (first flanking region) that anneals next to the repeat region; 2) a core repeat region that comprises short tandem repeats and anneals to (is complementary to) short tandem repeats in the DNA sequence of interest; and 3) a reporter flank (second flanking region) that comprises at least one nucleotide and is fluorophore-labeled (p. 37, col 2 and p. 38, Fig. 2. See below).
Halpern further teaches a probe with an anchor flank that contains more nucleotides than the reporter flank (p. 38, Fig. 2. See below).
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Halpern does not teach the second flanking region comprises at least one nucleotide and which contains at least one fluorophore and wherein the at least one fluorophore is attached to a residue of the second flanking region in a position complementary to a specific nucleotide of the sample capable of quenching the at least one fluorophore, or linked to a nucleotide adjacent -either upstream or downstream- to the position or linked to a nucleotide two positions away -either upstream or downstream- of the position so that it is brought into close proximity of one or more specific nucleotides of the sample capable of quenching the at least one fluorophore upon hybridization of the second flanking region within the sample.
Mao teaches base-quenched probes for detecting SNPs (p. 3293, Abstract). Mao teaches attaching a fluorophore to a base of a probe (p. 3293, col 2) and that the fluorescence is quenched by a base upon hybridization (p. 3293, Figs. 1 and 2). Mao further teaches that the fluorophore is quenched when attached to a residue at a position complementary to the quenching nucleotide (p. 3293, Fig. 1 and p. 3297, Fig. 6A) or attached to a residue one or two nucleotides away (p. 3298, Fig. 9A, See sequence pair 6). Mao states that most common commercial fluorophores could be influenced by bases and are in line with this mechanism (p. 3293, Abstract) and provides specific design criteria for success (p. 3301, col. 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Halpern and Mao to arrive at the instantly claimed invention. The modification would have entailed using only the probe of Halpern without the addition of an intercalating dye and using the design of Mao for the second flanking region to place the fluorophore near a base capable of quenching. One would have been motivated to substitute the fluorophore and base quenching probe elements of Mao with the fluorophore probe label of Halpern for the simplicity of use. The use of the fluorophore labeled-probe and base quenching taught by Mao would have simplified use of the probe by removing an additional variable. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Regarding claim 4, Halpern does not teach the use of a fluorophore selected from the group recited in the claim.
Mao teaches that most common commercial fluorophores, including , HEX, TET, JOE and TAMRA could be quenched by a base (p. 3293, Abstract). Mao specifically teaches the use of FAM as a fluorophore attached to the probe (p. 3294, col 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the FAM fluorophore of Mao as the fluorophore of Halpern to arrive at the instantly claimed invention. The modification would have entailed substituting a fluorophore of Mao for the fluorophore on the reporter region of Halpern. Substitution of one well-known reagent with known properties for a second well known reagent with well-known properties would have been prima facie obvious to the ordinary artisan at the time of the invention. One would have been motivated to make the substitution by the desire to optimize quenching paired with a base. Determining an appropriate fluorophore and base quenching pair would have been merely a matter of judicious selection and routine optimization. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Regarding claim 10, Halpern teaches fluorophore-labeled allele-specific probes for short tandem repeats (STRs) (p. 1, Abstract) comprising: 1) an anchor flank (first flanking region) that anneals next to a repeat region; 2) a core repeat region that comprises short tandem repeats and anneals to (is complementary to) short tandem repeats in the DNA sequence of interest; and 3) a reporter flank (second flanking region) that comprises at least one nucleotide and is fluorophore-labeled (p. 37, col 2 and p. 38, Fig. 2. See below).
Halpern further teaches a probe with a reporter flank (second flanking region) that contains fewer nucleotides than an anchor flank (first flanking region) (p. 38, Fig. 2. See below).
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Halpern does not teach the second flanking region contains at least one fluorophore attached to a residue of the second flanking region, whereby, upon hybridization of the second flanking region within the sample, the at least one fluorophore is brought into close proximity of a specific nucleotide able to quench the at least one fluorophore.
Mao teaches base-quenched probes for detecting SNPs (p. 3293, Abstract). Mao teaches attaching a fluorophore to a base of a probe (p. 3293, col 2) and that the fluorescence is quenched by a base upon hybridization (p. 3293, Figs. 1 and 2). Mao further teaches that the fluorophore is quenched when attached to a residue at a position complementary to the quenching nucleotide (p. 3293, Fig. 1 and p. 3297, Fig. 6A) or attached to a residue one or two nucleotides away (p. 3298, Fig. 9A, See sequence pair 6). Mao states that most common commercial fluorophores could be influenced by bases and are in line with this mechanism (p. 3293, Abstract) and provides specific design criteria for success (p. 3301, col. 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Halpern and Mao to arrive at the instantly claimed invention. The modification would have entailed using only the probe of Halpern without the addition of an intercalating dye and using the design of Mao for the second flanking region to place the fluorophore near a base capable of quenching. One would have been motivated to substitute the fluorophore and base quenching probe elements of Mao with the fluorophore probe label of Halpern for the simplicity of use. The use of the fluorophore labeled-probe and base quenching taught by Mao would have simplified use of the probe by removing an additional variable. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Regarding claim 13, Halpern does not teach the use of a fluorophore selected from the group recited in the claim.
Mao teaches that most common commercial fluorophores, including , HEX, TET, JOE and TAMRA could be quenched by a base (p. 3293, Abstract). Mao specifically teaches the use of FAM as a fluorophore attached to the probe (p. 3294, col 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use the FAM fluorophore of Mao as the fluorophore of Halpern to arrive at the instantly claimed invention. The modification would have entailed substituting a fluorophore of Mao for the fluorophore on the reporter region of Halpern. Substitution of one well-known reagent with known properties for a second well known reagent with well-known properties would have been prima facie obvious to the ordinary artisan at the time of the invention. One would have been motivated to make the substitution by the desire to optimize quenching paired with a base. Determining an appropriate fluorophore and base quenching pair would have been merely a matter of judicious selection and routine optimization. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Claims 2 and 11 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Halpern et al. (An STR Melt Curve Genotyping Assay for Forensic Analysis Employing an Intercalating Dye Probe FRET*. 2011. Journal of Forensic Sciences. 56(1): 36-45) in view of Mao et al. (The mechanism and regularity of quenching the effect of bases on fluorophores: the base-quenched probe method. 2018. 143(14): 3292-3301) as applied to claims 1 and 10 above, and further in view of Marras et al. (Efficiencies of fluorescence resonance energy transfer and contact‐mediated quenching in oligonucleotide probes. 2002. Nucleic Acids Research. 30(21): p. 1-8).
These rejections are modified as necessitated by amendments to the claims of the instant application.
Regarding claims 2 and 11, Halpern does not teach the plurality of probes wherein the at least one fluorophore is attached to a cytosine residue of the second flanking region and wherein the specific nucleotide of the sample capable of (able to-claim 10) quenching the at least one fluorophore is guanosine.
Mao teaches a C-quenched probe (i.e. fluorophore is attached to a cytosine residue) (p. 3296, Figure 5). Mao further teaches that cytosine can serve as a receptor and that guanine can be used as a donor (i.e. a specific nucleotide capable of quenching the fluorophore) (p. 3296, col 1).
Neither Halpern nor Mao teach the use of guanosine.
Marras measures the efficiencies of FRET and nucleotide mediated quenching. Marras teaches that guanosine is the most efficient nucleotide quencher (p6, col 2).
Marras states that the quenching efficiencies they measured can be used to aid the design of different kinds of probes for homogeneous hybridization assays (p. 6, col 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Halpern and Mao with the teachings of Marras to arrive at the instantly claimed invention.
The modification would have entailed
All three were interested in using fluorophore-labeled probes capable of changes in fluorescence upon hybridization. The reasons for combining Halpern and Mao are given above. It would further have been obvious to one having ordinary skill in the art that the guanosine quenching nucleotide of Marras could be substituted for the guanine quenching nucleotide of Mao. One would have been motivated by the strength of efficiency of guanosine quenching. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Claims 3 and 12 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Halpern et al. (An STR Melt Curve Genotyping Assay for Forensic Analysis Employing an Intercalating Dye Probe FRET*. 2011. Journal of Forensic Sciences. 56(1): 36-45) in view of Mao et al. (The mechanism and regularity of quenching the effect of bases on fluorophores: the base-quenched probe method. 2018. 143(14): 3292-3301) as applied to claims 1 and 10 above, and further in view of Ballantyne et al. (Increased amplification success from forensic samples with locked nucleic acids. 2011. Forensic Science International: Genetics. 5(4): 276-280).
These rejections are modified as necessitated by amendments to the claims of the instant application.
Regarding claims 3 and 12, neither Halpern nor Mao teach that the nucleotides are nucleic acid analogues.
Ballantyne teaches using locked nucleic acids (LNAs; nucleic acid analogues) in primers for STR loci profiling (p. 276, Abstract).
Ballantyne states several benefits to using LNAs in primers, including higher thermal stability and increased mismatch discrimination (p. 276, col 2). Further, LNA bases can be easily incorporated into existing primer sequence (p. 276, col 2).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Halpern and Mao with Ballantyne to arrive at the instantly claimed invention. The combination would have included modifying the combined probe design of Halpern using the fluorescent quenching design of Mao to substitute LNAs for the nucleotides of the probe. One would have been motivated to perform this substitution for the benefits of thermal stability and increased mismatch discrimination as stated in Ballantyne. Further, as Ballantyne states, the LNA bases can be easily incorporated into existing designs such as those in Halpern. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Claims 5 and 14 remain/are rejected under 35 U.S.C. 103 as being unpatentable over Halpern et al. (An STR Melt Curve Genotyping Assay for Forensic Analysis Employing an Intercalating Dye Probe FRET*. 2011. Journal of Forensic Sciences. 56(1): 36-45) in view of Mao et al. (The mechanism and regularity of quenching the effect of bases on fluorophores: the base-quenched probe method. 2018. 143(14): 3292-3301) as applied to claims 1 and 10 above, and further in view of Kemp et al. (A Novel Method for STR-based DNA Profiling Using Microarrays. 2005. J. Forensic Sci. 50 (5): p. 1-5) .
These rejections are modified as necessitated by amendments to the claims of the instant application.
Regarding claims 5 and 14, neither Halpern nor Mao teaches immobilizing probes on a support.
Kemp teaches short tandem repeat analysis and microarrays (p. 1, Abstract). Specifically Kemp teaches printing STR probes onto microarrays (p. 2, col 1).
Kemp states that their method allows thousands of identical features to be compared to each other (p. 4, col 1).
It would have been prima facie obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Halpern and Mao with the teachings of Kemp. All three were interested in using probes to detect genetic variants. The modification would have involved placing the Mao modified probes of Halpern on an array. One would have been motivated to do so for the advantage of being able to detect thousands of variants at one time as taught by Kemp. There would have been a reasonable expectation of success given the underlying materials and methods are widely known, successfully demonstrated, and commonly used as evidenced by the prior art.
Response to Arguments against Claim Rejection - 35 U.S. C § 103
Claims 1, 4, 10, and 13
The response asserts that “Halpern, in view of Mao, does not teach or suggest "a plurality of probes" including "a first flanking region... a sequence complementary to [a] specific DNA sequence of interest, which comprises at least one short tandem repeat and which anneals with the short tandem repeat region within a sample, and [a] second flanking region, which comprises at least one nucleotide and which contains at least one fluorophore and wherein the at least one fluorophore is attached to a residue of the second flanking region in a position complementary to a specific nucleotide of the sample capable of quenching the at least one fluorophore" as recited in claim 1 (p. 10-11).
Regarding Halpern, the response asserts “Halpern teaches an STR assay that uses a dye-probe FRET architecture in which an intercalating dye in the duplex functions as the FRET donor and a fluorophore attached to a reporter flank functions as the acceptor. Halpern further reports a second, dye-only signal channel that the reference uses as an internal control. That architecture is dye dependent, and Halpern's performance discussion ties probe design and melt behavior to the presence of the intercalating dye donor and the dual-signal control. Specifically, Halpern states that "not only does the probe/template hybrid duplex contribute signal from FRET, but fluorescent signal is also donated by the intercalation of dye by the amplicon. This additional amplicon signal can be used as a qualification of positive amplification in a manner similar to standard intercalating dye melt curve analysis providing an internal control unique to this approach." (See Id., p. 37, right column (emphasis added)). Halpern therefore does not teach a base-quenched plurality of probes as recited in claim I and, in fact, teaches away from removing the intercalating dye because doing so would eliminate both the donor in the signal path and the internal control channel Halpern relies upon and cites as a unique advantage” (p. 11).
Regarding Mao, the response asserts that Mao teaches very short probes intended specifically for single-nucleotide polymorphism (SNP) analysis, in which fluorescence quenching is achieved by placing the fluorophore directly opposite a guanine residue in the target sequence. (See Mao, Fig. 2). Mao does not teach a three region STR probe in which the second flanking region contains the fluorophore as recited, does not teach that the first flanking region contains more nucleotides than the second flanking region as recited, and does not teach a plurality of probes representing the allelic variability of an STR locus as recited. Mao's teachings relate solely to single-probe SNP interrogation (p.11).
Applicant's arguments have been fully considered but are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding the teachings of Halpern, the applicant is correct that the system of Halpern includes an intercalating dye that contributes to the performance and intended use of the probe of Halpern. However, the intercalating dye is independent of the probe structure: comprising an anchor flank, a core repeat region, and a reporter region labeled with a fluorophore which meets the limitations of the claim as set forth in the rejection above. Further, the fact that the design of Halpern reports that the fluorophore label is an acceptor does not limit the function of the fluorophore in other contexts.
Regarding the teachings of Mao, Mao teaches quenching of a fluorophore opposite a guanine residue in the target sequence. The intended use of the probes by Mao is not relevant to the structure.
The response further asserts that the rationale to substitute Mao's base-quench placement into Halpern's dye-dependent system "for simplicity" overlooks what Halpern teaches as advantages of the intercalating dye: it acts as the FRET donor in the probe/template duplex and provides a second, amplicon-only channel used as an internal melt-curve control "unique to this approach." Eliminating the dye removes both the donor and that control channel and thus alters the principle of operation that Halpern teaches. Mao, which teaches short, SNP-focused base-quenched probes, does not teach discarding a donor dye or redesigning Halpern's dual-signal architecture into a base-quenched system, nor does it teach how to achieve predictable melt behavior when the fluorophore must align opposite a specific quencher base across a plurality of STR alleles. The Office argues that combining Mao with Halpern "would have simplified use of the probe and removed an additional variable," but Halpern expressly teaches the advantages associated with its intercalated dye, and neither reference provides a motivation for removing the dye. (Office Action, p. 12). The record therefore lacks an articulated teaching, suggestion, or motivation with a rational underpinning to make these coordinated changes. (p. 11-12)
Applicant's arguments have been fully considered but are not persuasive.
In response to applicant's arguments against the rationale for substituting the baes-quench system of Mao for the dye-dependent system of Halpern, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
It is accurate that the removal of the intercalating dye in the system of Halpern would alter the principle of operation and intended use that Halpern teaches. However, the structural elements of a probe comprising a core repeat region complementary to short tandem repeats, a first flanking region, and a third flanking region containing a fluorophore could still be used without the intercalating dye. If the prior art structure is capable of performing the intended use, then it meets the claim.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., how to achieve predictable melt behavior when the fluorophore must align opposite a specific quencher base across a plurality of STR alleles) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claims 2 and 11
The response asserts that Halpern and Mao do not teach or suggest all the elements of
claims 1 and 10 and Marras does not cure their deficiencies. Specifically the response asserts Marras does not teach a probe containing all the elements of claims 1 and 10. Furthermore, there is nothing in Marras that would motivate a person of ordinary skill in the art to modify the teachings of Marras, Halpern, and Mao in any way that would result in a probe containing all the elements recited in claims 1 and 10 (p. 12).
Applicant's arguments have been fully considered but are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claims 3 and 12
The response asserts Halpern and Mao do not teach or suggest all the elements of claims 1 and 10 and Ballantyne does not cure their deficiencies. The response further asserts there is nothing in Ballantyne that would motivate a person of ordinary skill in the art to modify the teachings of Ballantyne, Halpern, and Mao in any way that would result in a probe containing all the elements recited in claims 1 and 10 (p. 13).
Applicant's arguments have been fully considered but are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claims 5 and 14
The response asserts Halpern and Mao do not teach or suggest all the elements of claims 1 and 10 and Kemp does not cure their deficiencies.
The response further asserts that Kemp does not teach a probe containing all the elements of claims 1 and 10 and there is nothing in Kemp that would motivate a person of ordinary skill in the art to modify the teachings of Kemp, Halpern, and Mao in any way that would result in a probe containing all the elements recited in claims 1 and 10 (p. 14).
Applicant's arguments have been fully considered but are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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 JESSICA GRAY whose telephone number is (571)272-0116. The examiner can normally be reached Monday-Friday 8-5 with second Fridays off.
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/JESSICA GRAY/Examiner, Art Unit 1682
/WU CHENG W SHEN/Supervisory Patent Examiner, Art Unit 1682