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 Arguments
The Applicant has provided a response, dated 10/29/2025. In the response, the Applicant has provided Arguments drawn to the previous rejections, and amendments to claims 5 and 17.
The amendment to claim 5 has allowed for the 35 USC 112(b) rejection to be withdrawn. The amendment to claim 17 provides for a different lack of clarity, and will be provided with a 35 USC 112(b) rejection with rationale that is different than that of the previous Office Action.
On page 7 of the Applicant’s Arguments, the Applicant contends that Tarhan does not recognize that the biomolecule coating is “a conductive polymer.” First, there is no claim limitation drawn to “conductive polymer,” the limitation is drawn to “a conductive macromolecule.” The ordinary artisan would understand that there is a tremendous distinction between the two limitations, wherein the latter is exceptionally broader than the former. Second, there is no specific definition of “conductive” until claim 7, wherein the definition is more akin to a piezoelectric material, instead of a traditional conductor, like the conductive polymer: polyaniline; if the claim should be limited to a particular material, or a particular class of material, this should be more clearly claimed. Third, “coating” is never explicitly defined, and can include the physical contact of the tubular body with kinesin, as disclosed in Tarhan. Fourth, although Tarhan does not state that kinesin is “conductive” as claimed, it inherently possesses this physical trait, in that it appears to respond to an electric field in a manner that is consistent with the claimed limitation.
On page 8 of the Applicant’s Arguments, the Applicant states that Tarhan’s tubular body is not hollow. Although the “tubular body” is generally defined in the specification, it should be noted that the metal coating of the silica needles is necessarily a “tubular body” consistent with the definition, since there is nothing in the specification or claims that would suggest that a different material cannot fill the hollow portion.
On page 8 of the Applicant’s Arguments, the Applicant argues against the various surface treatments provided by Tarhan. There is nothing in the claim language that forbids any materials between the tubular body and the conductive macromolecule. If the conductive macromolecule is directly bound to the metal of the tubular body, this should be explicitly claimed.
On page 8 of the Applicant’s Arguments, the Applicant provides for the acronym “SAM.” As this is undefined, it is unclear what the Applicant is trying to argue.
On page 8 of the Applicant’s Arguments, the Applicant points to PEDOT as an example “conductive macromolecule.” Please note, there are absolutely no claim limitations drawn to the material of the “conductive macromolecule,” and there are no clear definitions on how the artisan must interpret “conductive,” since the Applicant appears to contend that piezoelectric activity should be consistent with “conductive.”
On page 8 of the Applicant’s Arguments, the Applicant points to kinesin in solution and bound to a glass coverslip. As discussed above, “coating” is never explicitly defined, and can include the physical contact of the tubular body with kinesin, as disclosed in Tarhan.
On page 8 of the Applicant’s Arguments, the Applicant argues that silicon is not a metal. This is absolutely true; however, there is nothing in the claim language that forbids metalloids being coated with a conductive metal. Since silicon is coated in a conductive metal, the limitation providing a “tubular body [that] is made of a conductor” is entirely fulfilled. Furthermore, the resultant metal around the silica needle is “hollow,” in the sense that it is “bar-shaped, center portion-removed,” and has an inner and outer diameter. See paragraph [0158].
On pages 9 and 10 of the Applicant’s Arguments, the Applicant provides a general summation of what they invented. While the Applicant’s invention is certainly encompassed by the claim language, the claim language also encompasses things that the Applicant did not invent, and are not consistent with what the Applicant considers their invention. That is to say, given the broadest reasonable interpretation of the claims, other embodiments that the Applicant does not perceive as their invention can also be interpreted within the framework of the claim language. While it is certainly possible that what the Applicant invented is novel, the claim language is significantly broader than what the Applicant invented; and while the Applicant should certainly be entitled to obvious variants of their novel invention, they should not be entitled to inventions that they did not invent, but could be encompassed by the claim language.
The Applicant has added new claim 62, which will be discussed below. Claim 5 has been amended in such a manner as to allow for the withdrawal of the 35 USC 112(b) rejection; the claim language of claim 17 continues to be rejected under 35 USC 112(b), but for different reasons than those provided in the previous Office Action. All of the prior art rejections are maintained. Please note, after reading through the Applicant’s Arguments, it is clear that the Applicant’s invention is fundamentally different than Tarhan; Tarhan was used, initially, because the claim language suggested that it could be applied. While Tarhan, admittedly, does not teach the Applicant’s invention, it teaches the claims, given their broadest reasonable interpretation.
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.
Claim 17 is 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.
Claim 17 is indefinite because it is unclear what “configured” is supposed to mean, and how this configuring affects the structure of the tubular body. For example, a “tubular body” can be placed in any of the claimed substances without any configuration, and it is further unclear how this configuration is “applied to the substance.” There is nothing in the instant specification that clearly defines how the artisan must interpret the terms “configured” and “applied,” and how they relate to the claimed “substance.”
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.
Claims 1, 5, 7, 11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tarhan, et al (Lab on a Chip, 10, 86-91, 2010 [IDS Reference]) and evidenced by Li, et al (APL Bioengineering, 8, 026118, 2024). Tarhan teaches a tubular body that is made of the conductive material gold. See page 87, Figure 2. Tarhan teaches that the tubular body is coated with a kinesin macromolecule. See page 86, “Introduction” section; page 90. Although Tarhan does not teach anything about the conductivity of kinesin, it is consistent with the definition of “conductive macromolecule” found in the instant specification.
Li teaches behavior that is inherent to the nature of kinesin. Particularly, the fact that it responds to AC voltage, further confirming the conductive nature of the kinesis macromolecule. See page 1, “Abstract” section. Although it is noted that Li was published after the effective filing date, Li provides for an inherent behavior of a known molecule, and as such, the publication date is immaterial. See MPEP 2112(II).
With respect to claim 1, Tarhan teaches the claimed tubular body, that is a conductive metal and then coated with a conductive macromolecule.
With respect to claim 5, Tarhan teaches gold that was applied by sputtering. See page 87, “Needles” section. “Sputtering” is considered an “electroless plating” method.
With respect to claims 7 and 11, based upon the instant specification, the kinesin of Tarhan fulfills all of the claimed limitations. Furthermore, Li confirms the AC voltage responsiveness of the kinesin molecule. As such, these limitations must have inherently been met by Tarhan.
With respect to claim 17, Tarhan describes the system as “carriers” suggesting that the purpose is aligned with that of claim 17. See page 90, “Conclusion” section.
Claim(s) 1 and 62 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Asiabi, et al (Journal of Chromatography A, 1397, 19-26, 2015). Asiabi provides for a stainless-steel tube with a polyaniline coating. See page 19, “Abstract” section. Stainless-steel is a conductive metal, and it is coated with polyaniline, which is a conductive polymer, wherein polymer is consistent with macromolecule.
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 DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
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/DAVID W BERKE-SCHLESSEL/Primary Examiner, Art Unit 1651