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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The limitation that “first and second functionalization for selective non-binding interaction with respective analytes” does not have support in the specification. As is described in the MPEP § 2173.05 (i) “[a]ny negative limitation or exclusionary proviso must have basis in the original disclosure” and “[t]he mere absence of a positive recitation is not basis for an exclusion.” In this case there is no mention of the presence or absence of the first or second functionalization is binding or non-binding with the respective analytes. The specification only discusses in prior art which binds to an analyte present in the analysis liquid, but these discussions are related to prior art and not to the invention claimed. The specification also states that the present invention aims to provide improvements over the technologies discussed above, but does not state what the improvements are and is therefore not taught whether the first and second functionalization is binding or non-binding with the analytes. The applicant also points to another paragraph in their specification which discusses that the device is resuable. However, this paragraph doesn’t describe how the device is resuable. The device could be resuable by changing out the substrate of the device for a different substrate and reusing the rest of the device, or the device could be reused by unbinding analytes that are stuck to the device among other abilities of the device to be reused. Based upon all of the above discussions there appear to be no explicit or implicit support for the non-binding described in the claim and there is no evidence that the applicant contemplated the nature of the binding at the time of filing this invention.
Claim Rejections - 35 USC § 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 (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 the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 10-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sperling, et al., “Nanoplasmonic Discrimination of Organic Solvents Using a Bimetallic Optical Tongue”, Proc. SPIE 10895, Frontiers in Biological Detection: From Nanosensors to Systems XI, 108950G (7 March 2019), hereinafter Sperling.
Regarding claim 10, Sperling teaches a method of analysing a fluid comprising a mixture of two or more analytes (abstract), the method including providing a surface plasmonic sensing device (figure 1) comprising: a substrate (glass); a first array of localised surface plasmon resonance island structures (“Au”) on the substrate (figure 1); a second array of localised surface plasmon resonance island structures (“Al”) on the substrate (figure 1), wherein the localised surface plasmon resonance island structures of the first and second array respectively have first (figure 1b, “Au-DT”) and second surface functionalisation (figure 1b, “Al-HDMS”) for selective non-binding interaction with respective analytes (abstract) to cause analyte segregation at an interface between the fluid and the surface functionalisation and a corresponding change to the local refractive index around the localised surface plasmon resonance island structures to thereby selectively alter the localised surface plasmon resonance response (page 5, paragraph 4.3); and wherein the first surface functionalisation is different to the second surface functionalization (figure 1b); contacting the first and second arrays (paragraph 4.2) with said fluid comprising a mixture of two or more analytes (figure 4) and thereby allowing the analytes selectively to non-bindingly interact with the surface functionalisations available on the first and second arrays of localised surface plasmon resonance island structures (paragraphs 3.3, 3.4 and 4.3); illuminating the first and second arrays with electromagnetic radiation to cause localised surface plasmon resonance in the composite array (paragraph 3.4); receiving transmitted electromagnetic radiation from the composite array and detecting said localised surface plasmon resonance to analyse one or more characteristics of said analytes (paragraphs 3.4 and 3.5); obtaining transmission spectra for the reflected or transmitted electromagnetic radiation from the arrays (paragraphs 3.4 and 3.5); determining from each transmission spectrum at least one spectral characteristic value (paragraph 4.3); and arranging said spectral characteristic values in a data matrix and carrying out linear discriminant analysis (LDA) on the data matrix to classify the data in the data matrix (paragraph 4.3).
Regarding claim 11, Sperling teaches wherein the interaction of the analytes with the surface functionalisation selectively alters the refractive index around the localised surface plasmon resonance island structures to thereby selectively alter the localised surface plasmon resonance response (paragraph 4.3).
Regarding claim 12, Sperling teaches wherein the surface plasmonic sensing device further comprises a reference sensing region (figure 1a), wherein the reference sensing region comprises: a first reference array of localised surface plasmon resonance island structures on the substrate (figure 1a); a second reference array of localised surface plasmon resonance island structures on the substrate (figure 1), wherein: the surface plasmon resonance island structures of the first and second reference array have no surface functionalisation or respectively have different surface functionalisation compared with the main sensing region (figure 1a); and the first and second reference arrays are interspersed with each other to provide a composite reference array (figure 1a, they would be interspersed to some amount), the method further comprising the steps: contacting the reference sensing region with said fluid comprising said mixture of two or more analytes (paragraph 4.2); illuminating the reference sensing region with electromagnetic radiation to cause localised surface plasmon resonance in the composite reference array (paragraph 3.4); and receiving reflected or transmitted electromagnetic radiation from the composite reference array and detecting said localised surface plasmon resonance for comparison with the main sensing region (paragraphs 3.4 and 3.5).
Regarding claim 13, Sperling teaches wherein the reference sensing region is selectively illuminated (paragraph 4.1 and 4.2).
Regarding claim 14, Speling teaches wherein the surface plasmonic sensing device further comprises an auxiliary sensing region, wherein the auxiliary sensing region comprises: a first auxiliary array of localised surface plasmon resonance island structures on the substrate (figures 1b and 1c); a second auxiliary array of localised surface plasmon resonance island structures on the substrate (figures 1b and 1c), wherein: the surface plasmon resonance island structures of the first and second auxiliary array respectively have first and second auxiliary surface functionalisation for selective interaction with respective analytes (figures 1b and 1c); the first auxiliary surface functionalisation is different to the second auxiliary surface functionalization (figures 1b and 1c); and the first and second auxiliary arrays are interspersed with each other to provide a composite auxiliary array (figures 1b and 1c, they would be interspersed to some amount), the method further comprising the steps: contacting the auxiliary sensing region with said fluid comprising said mixture of two or more analytes and thereby allowing the analytes selectively to interact with the surface functionalisations available on the first and second arrays of localised surface plasmon resonance island structures (paragraph 4.2); illuminating the auxiliary sensing region with electromagnetic radiation to cause localised surface plasmon resonance in the composite auxiliary array (paragraph 3.4); and receiving reflected or transmitted electromagnetic radiation from the composite auxiliary array and detecting said localised surface plasmon resonance to analyse one or more characteristics of said analytes and/or for comparison with the main sensing region (paragraphs 3.4 and 3.5).
Regarding claim 15, Sperling teaches wherein the reference sensing region is selectively illuminated (paragraph 4.1 and 4.2).
Response to Arguments
Applicant's arguments filed 4/3/2026 have been fully considered but they are not persuasive.
Regarding applicant’s argument that the support for the non-binding interaction clarification is based on Applicant’s disclosure and contrast between the present invention and the teachings of cited prior art document US 2011/0164252 is not found persuasive. What the prior art does or does not teach, does not provide support for limitations in the claim. The claims require written support in the specification as filed and not what is taught in the prior art. Therefore, applicant’s arguments and comparison between the applicant’s invention and the prior art for providing support for the non-binding limitation is not persuasive.
Regarding applicant’s argument that the specification discusses how the device is resuable in page 8 of applicant’s specification. However, this paragraph doesn’t describe how the device is resuable. The device could be resuable by changing out the substrate of the device for a different substrate and reusing the rest of the device, or the device could be reused by unbinding analytes that are stuck to the device among other abilities of the device to be reused, any of which could still have the device function as a binding device rather than non-binding.
Regarding applicant’s argument on pages 13-14 regarding the segregation of solvent and the change in local refractive index is not found persuasive. It is not seen in this paragraph where one of ordinary skill in the art would have recognized that the device would be non-binding.
Regarding applicant’s argument that the in the summary of the invention discusses the combination of responses from multiple cross-reactive sensors and this is an indication of non-binding interactions is not found persuasive. It is not seen how response from multiple cross-reactive sensors would indicate non-binding interactions. It would seem as though cross-reactive sensors would be able to function as either binding or non-binding and therefore also does not provide support for the interactions to be non-binding as claimed.
Regarding applicant’s argument for page 13 in the surface chemistries who chose for various levels or hydrophobicity or hydrophilicity and different chemical functionalities and altering surface chemistries would affect how individual chemical components interact with the structures is not found persuasive. Individual components would be able to interact with the structures differently if the interaction is binding or non-binding. The surface chemistries could change if the individual components bind or not bind to the surface which in turn would change how the chemical components interact with the structures. As the discussion in this paragraph is not limited to non-binding interactions, this paragraph does not provide written support for the non-binding interactions as claimed.
Regarding applicant’s argument that there would not be a significant variation in the response based on the concentrations is not found persuasive. Even if there is not a significant variation if there was a binding interaction does not change that there would be a variation and therefore also does not provide the written support for non-binding interactions.
Regarding applicant’s arguments that the Sperling NPL reference is not prior art as the reference falls under one of the exemptions is not found persuasive. The examiner agrees with the facts of 1 and 2, however, fact 3 is not enough to overcome the Sperling NPL as prior art in this application. The examiner notes that the authors Glenn Burley and Steven Neale are not listed as inventors on the instant application. The applicant is seeming to state that each of the inventors in the present application has previously expressly declared that they are the inventors (the filed oath or declaration under 37 CFR 1.63 on 4/3/2023) is enough to render the Sperling NPL not as prior art is not found persuasive. As discussed in MPEP § 2153.01(a):
“If the patent application specification as filed contains a specific reference to a grace period inventor-originated public disclosure, and an oath or declaration under 37 CFR 1.63 from the inventor or the appropriate joint inventor(s) has been made of record, the Office will consider it apparent from the specification that the grace period public disclosure is attributable to the inventor or a joint inventor, provided there is a sufficient explanation of why the exception applies to a particular disclosure and there is no other evidence to the contrary. The applicant should also provide a copy of the grace period inventor-originated public disclosure (e.g., copy of a printed publication).”
However, in this case, the specification does not contain a specific reference to Sperling NPL (a grace period inventor-originated public disclosure) and therefore the oath or declaration under 37 CFR 1.63 is not enough.
As is further stated in MPEP § 2153.01(a):
“If, however, the application names fewer joint inventors than a publication (e.g., the application names as joint inventors A and B, and the publication names as authors A, B and C), it would not be readily apparent from the publication that it is an inventor-originated disclosure and the publication would be treated as prior art under AIA 35 U.S.C. 102(a)(1) unless there is evidence of record that an exception under AIA 35 U.S.C. 102(b)(1) applies.”
To establish that a disclose is not prior art under 102(a) dues to an exemption, the MPEP § 2153.01(a) states:
“The Office has provided a mechanism for filing an affidavit or declaration (under 37 CFR 1.130) to establish that a disclosure is not prior art under AIA 35 U.S.C. 102(a) due to an exception in AIA 35 U.S.C. 102(b). See MPEP § 717. In the situations in which it is not apparent from the grace period disclosure itself or the patent application specification that the disclosure is an inventor-originated disclosure, the applicant may establish that the AIA 35 U.S.C. 102(b)(1)(A) exception applies by way of an affidavit or declaration under 37 CFR 1.130(a). MPEP § 2155.01 discusses the use of affidavits or declarations to show that a disclosure was an inventor-originated disclosure made during the grace period.”
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. 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 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 MATTHEW D KRCHA whose telephone number is (571)270-0386. The examiner can normally be reached M-Th 7am-5pm.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571)270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
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