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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/06/2026 has been entered.
Response to Amendment
The Amendment filed 04/06/2026 has been entered. Claims 1-19 remain pending in the application. Claims 9-19 are withdrawn.
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 1-8 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, claim 1 recites “flow restrictor is associated with the branch outlet to direct a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow…” in lines 12-16. While the specification discloses a flow restrictor is associated with the branch outlet to allow a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow (paragraph [0002]), a flow restrictor is associated with the branch outlet such that only a fraction of the purified sample flow is permitted to discharge from the branch outlet as a purified sample flow (paragraph [00017]), and the flow splitter allows for diverting of a fraction of the purified sample flow to the second liquid chromatography apparatus (paragraph [00019]), the disclosure fails to describe a “flow restrictor is associated with the branch outlet to direct a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow” (emphasis added). Thus, the claim 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims 2-8 are rejected by virtue of their dependency on claim 1.
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 1-8 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.
Regarding claim 1, claim 1 recites the limitation "the portion" in line 14. There is insufficient antecedent basis for this limitation in the claim. Claims 2-8 are rejected by virtue of their dependency on claim 1.
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 5-6, and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Petro et al. (US 20030089663 A1) in view of Sims (US 20120240666 A1; cited in the IDS filed 09/29/2022).
Regarding claim 1, Petro teaches an automated system (Fig. 1) for analyzing at least one sample from a bioreactor (interpreted as an intended use, MPEP 2114; Fig. 1 teaches a system with a detector for analyzing at least one sample from a bioreactor, such as samples 100 from a microtiter plate; note that the sample and bioreactor are not positively recited structurally), the system comprising:
a probe (Fig. 1, sample handling robot 1410 comprising a needle, i.e. probe) for drawing the at least one sample from the bioreactor (interpreted as an intended use, MPEP 2114; Fig. 1 and paragraph [0039] teach the sample handling robot 1410 comprising a needle for sampling, i.e. drawing, the samples 100 from wells of a microtiter plate, wherein the wells of the microtiter plates are capable of functioning as a bioreactor for reactions of biological materials);
a pump (Fig. 1, pump 1200) for pressurizing the drawn at least one sample into a sample flow (interpreted as an intended use, MPEP 2114; Fig. 1 and paragraph [0039] teach pump 1200 provides pumping or pressure for a sample provided by the injection needle to an injection port 1310 of valve 1300, thus supplying a sample flow towards first dimension liquid chromatography column 1500);
a first conduit (Fig. 1, the fluid conduit between elements 1300 and 1500) connected to the pump for conveying the sample flow (Fig. 1 and paragraph [0039]);
a first liquid chromatography apparatus (Fig. 1, first dimension liquid chromatography column 1500) having a primary inlet (Fig. 1, left inlet of first dimension liquid chromatography column 1500 towards element 1300) and a primary outlet (Fig. 1, right outlet of first dimension liquid chromatography column 1500 towards element 2300), the primary inlet connected to the first conduit to receive the sample flow (Fig. 1), the first liquid chromatography apparatus being configured to purify at least one target protein in the sample flow to create a purified sample flow, the purified sample flow being discharged from the primary outlet (Fig. 1 and paragraphs [0010],[0044] teaches the first liquid chromatography column separates at least one sample component of the sample, i.e. creates a purified sample, which are discharged from the outlet of element 1500; therefore, is structurally configured to perform the claimed functional limitation; the instant specification, paragraph [0025] discusses the first liquid chromatography apparatus is any 1D-LC apparatus, therefore Petro’s 1D-LC is the same as the instant invention and would be structurally capable of performing the functions, see MPEP 2112.01(I));
a second conduit (Fig. 1, the fluid conduit between elements 1500 and 2300) connected to the primary outlet for conveying the purified sample flow (Fig. 1 and paragraph [0044]);
a flow splitter (Fig. 1 and paragraph [0040], interpreted as second dimension injector 2300 that includes flow splitters) having a splitter inlet (Fig. 1, the left inlet of element 2300 connected to element 1500), a branch outlet (Fig. 1, the bottom outlet of element 2300 connected to element 2500), and a splitter outlet (Fig. 1, the right outlet of element 2300 connected to waste/exhaust), the splitter inlet connected to the second conduit to receive the purified sample flow (Fig. 1), wherein the flow splitter is associated with the branch outlet (Fig. 1) to direct a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow with the portion of the purified sample flow not discharged from the branch outlet being discharged from the splitter outlet as an effluent flow (interpreted as a functional limitation of the flow splitter, see MPEP 2114; Fig. 1 and paragraphs [0039]-[0040] teach second dimension injector 2300 includes flow splitters and fluidic connections capable of allowing a portion of the first-dimension mobile phase eluent from element 1500 to discharge to the outlet towards element 2500 and another portion, i.e. effluent flow, to the outlet towards a waste/exhaust port to the right of element 2300), wherein the second conduit (Fig. 1, the fluid conduit between elements 1500 and 2300) is continuous between the primary outlet and the splitter inlet (Fig. 1 teaches the fluid conduit between elements 1500 and 2300 is continuous between the right outlet of first dimension liquid chromatography column 1500 towards element 2300, i.e. primary outlet, and the left inlet of element 2300 connected to element 1500, i.e. splitter inlet);
a third conduit (Fig. 1, the fluid conduit between elements 2300 and 2500) connected to the branch outlet (Fig. 1) for conveying the purified sample fraction flow (Fig. 1); and,
a second liquid chromatography apparatus (Fig. 1, second dimension liquid chromatography column 2500 and detector 2600) having a secondary inlet (Fig. 1, interpreted as the upper inlet of chromatography column 2500 towards element 2300) connected to the third conduit (Fig. 1) to receive the purified sample fraction flow (Fig. 1 and paragraphs [0040]-[0041]), the second liquid chromatography apparatus configured to analyze the at least one target protein in the purified sample fraction flow (paragraph [0040] teaches the detector 2600 is configured for detecting a property of the second-dimension separated subcomponents, therefore is configured to analyze at least one target protein from the eluent from the first dimension liquid chromatography column 1500; paragraph [0052] teaches the first dimension mobile phase eluent are injected into a second-dimension mobile phase for second-dimension analysis), wherein the third conduit (Fig. 1, the fluid conduit between elements 2300 and 2500) is continuous between the branch outlet and the secondary inlet (Fig. 1 teaches the fluid conduit between elements 2300 and 2500 is continuous between the bottom outlet of element 2300 connected to element 2500, i.e. branch outlet, and the upper inlet of chromatography column 2500 towards element 2300, i.e. secondary inlet).
Petro fails to teach: wherein a flow restrictor is associated with the branch outlet to direct a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow with the portion of the purified sample flow not discharged from the branch outlet being discharged from the splitter outlet as an effluent flow.
Petro teaches flow-splitting for changing concentration and flow rate of a sampled portion of a first-dimension eluent (paragraphs [0040], [0041]). Petro teaches other embodiments wherein second-dimension mobile-phase is supplied to each second-dimension columns through one or more flow restrictors (paragraph [0019]). Petro teaches in preferred aspects, the fluid communication path to each of the two or more second-dimension columns includes one or more flow restrictors associated with each supply conduit (paragraph [0055]). Petro teaches fractions of separated sample components are sampled (paragraph [0045]).
Sims teaches a multi-dimensional liquid analysis system including a flow splitter positioned between two liquid chromatography columns (Fig. 1 teaches flow splitter 24 fluidically between chromatography columns 16 and 34; abstract), which is similar to Petro. Sims teaches a flow splitting system (Fig. 1, flow splitter 24; paragraph [0008]) comprising a flow restrictor ([0008], “flow restricting device”) to direct a fraction of a purified sample flow to discharge from a branch outlet as a purified sample fraction flow (Fig. 1 and paragraphs [0035]-[0036] teaches directing a fraction of the purified sample flow, which was purified from separation column 16, to discharge from second outlet 28) with the portion of the purified sample flow not discharged from the branch outlet being discharged from a splitter outlet as an effluent flow (Fig. 1 and paragraph [0032] teaches a portion of the purified sample flow, which was purified from separation column 16, is discharged from first outlet 26 as an effluent flow or waste stream). Sims teaches the flow splitting system (Fig. 1, flow splitter 24; paragraph [0008]) comprising a T-style junction having an inlet for receiving fluid exiting a first HPLC system separation column, a first outlet for permitting indirectly flow controlled outflow therefrom, the first outlet being fluidly coupled to a flow restricting device, and a second outlet for permitting directly flow controlled outflow therefrom (Fig. 1; paragraph [0008]). Sims teaches the flow restricting device creates a pressure at the junction that is adjustable (paragraph [0008]). Sims teaches system 10 is arranged such that first outlet 26 need only have sufficient flow restriction to avoid over-pressurization of pump 30 during the time that pump 30 controls fluid flow through second outlet 28 (paragraph [0032]; Fig. 1). Sims teaches a flow restrictor may be employed downstream of a detector or between a splitter and detector to provide sufficient flow restriction to enable a pump to operably control flow division at the splitter (paragraph [0042]). Sims teaches positioning flow restrictor upstream of first dimension detector may eliminate back pressure applied to detector to improve sampling accuracy (paragraph [0042]).
Since Sims teaches a liquid analysis system including a flow splitter positioned between two liquid chromatography columns, similar to Petro, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the flow splitter of Petro to incorporate Petro’s teachings of the use of flow restrictors associated with flow paths for liquid chromatography columns (paragraphs [0019],[0055]) and flow-splitting for changing concentration and flow rate of a sampled portion of a first-dimension eluent (paragraphs [0040], [0041]) and sampling fractions of separated sample components (paragraph [0045]) and Sim’s teachings of a flow splitting system with an outlet associated with a flow restrictor, which directs a purified sample flow into two streams, one towards a second separation column and the other towards a waste container (paragraphs [0008],[0032],[0035]-[0036],[0042]; Fig. 1) to provide: wherein a flow restrictor is associated with the branch outlet to direct a fraction of the purified sample flow to discharge from the branch outlet as a purified sample fraction flow with the portion of the purified sample flow not discharged from the branch outlet being discharged from the splitter outlet as an effluent flow. Doing so would have a reasonable expectation of successfully improving control of fluid concentration, flow rate, and pressure from an outlet of the flow splitter to improve accuracy of sampling and analysis, while enabling proper separation and splitting of a purified sample flow into the branch outlet and splitter outlet as discussed by Sims (paragraphs [0008],[0032],[0035]-[0036],[0042]; Fig. 1).
Regarding claim 2, Petro further teaches wherein the drawn at least one sample is collected from the bioreactor in one or more interim vials (interpreted as an intended use of the system, see MPEP 2114; note that the sample, bioreactor, and vial are not positively recited structurally; Petro’s pump 1200 and probe 1410 are structurally capable of drawing a sample from a bioreactor in at least one vial at a later time, such as a well of the microtiter plate, which can be interpreted as a vial since it is a small container for holding liquid).
Note that “at least one sample”, “bioreactor”, and “one or more interim vials” are not positively recited structurally and is interpreted as an intended use of the claimed system. A claim is only limited by positively recited elements; thus, inclusion of the material or article (“at least one sample”, “bioreactor”, and “one or more interim vials”) worked upon by a structure (probe, pump) being claimed does not impart patentability to the claims (see MPEP 2115).
Regarding claim 5, Petro further teaches wherein the first liquid chromatography apparatus is a first-dimension liquid chromatography apparatus (Fig. 1, paragraphs [0039],[0044], first-dimension liquid chromatography column 1500).
Regarding claim 6, modified Petro fails to teach a system as in claim 1, further comprising a filter for filtering the at least one sample prior to being pressurized by the pump.
Petro teaches an embodiment wherein a sample includes preliminary separation to remove impurities, which includes filtering with a microfilter (paragraph [0080]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Petro to incorporate the teachings of a preliminary filtering step of Petro (paragraph [0080]) to provide: a system as in claim 1, further comprising a filter for filtering the at least one sample prior to being pressurized by the pump. Doing so would have a reasonable expectation of successfully removing impurities prior to sample processing and analysis as taught by Petro (paragraph [0080]).
Regarding claim 8, Petro further teaches a system as in claim 1, further comprising at least one sample collection loop (Fig. 2 and paragraph [0010] teaches sample loops) for collecting the purified sample fraction flow to amass a pre-determined volume for analysis by the second liquid chromatography apparatus (paragraph [0010] teaches sample loops for collecting the first-dimension mobile phase eluent to be directly injected to the second HPLC for analysis; paragraph [0099] teaches the loops have a pre-determined volume).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Petro in view of Sims as applied to claim 2 above, and further in view of Wu et al. (US 20220137061 A1; effectively filed 02/14/2019).
Regarding claim 3, while Petro teaches the pump draws a solvent from a container and then pressurizes the solvent into the sample flow (Fig. 1 and paragraph [0039]), modified Petro fails to teach wherein the pump draws the drawn at least one sample from the one or more interim vials and, then, pressurizes the drawn at least one sample into the sample flow.
Wu teaches a system for automated preparation of a sample for analysis and automated performance of an assay (abstract; Fig. 1), wherein the system includes a chromatography device (paragraphs [0048],[0068]). Wu teaches sample vials containing molecules of interest (paragraph [0045]; Fig. 1), wherein an automated sampling system includes a metering device and pump to obtain a desired volume of the sample and ultimately push the sample from a sample loop into a needle seat port (paragraph [0045]). Wu teaches the system includes intermediate vials to dilute a sample when necessary and the system obtains a sample, deposits the sample in respective intermediate vial for dilution (paragraph [0065]). Wu teaches vials, such as flow-through vials, may be used as temporary or transitional containers for intermediate/partially-processed samples before they carried on to the next processing step in the system (paragraph [0008]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Petro to incorporate the teachings of vials, such as flow-through vials, for samples and intermediate/partially-processed samples in a system for automated sample analysis of Wu (paragraphs [0008],[0045],[0065]; Fig. 1) to provide: wherein the pump draws the drawn at least one sample from the one or more interim vials and, then, pressurizes the drawn at least one sample into the sample flow. Doing so would have a reasonable expectation of successfully improving automation and processing of the sample flow throughout the system via the pump as discussed by Wu (paragraphs [0008],[0045],[0065]; Fig. 1).
Regarding claim 4, modified Petro fails to teach wherein the first liquid chromatography apparatus includes one or more primary vials which collect the sample flow.
Wu teaches a system for automated preparation of a sample for analysis and automated performance of an assay (abstract; Fig. 1), wherein the system includes a chromatography device (paragraphs [0048],[0068]). Wu teaches sample vials containing molecules of interest (paragraph [0045]; Fig. 1), wherein an automated sampling system includes a metering device and pump to obtain a desired volume of the sample and ultimately push the sample from a sample loop into a needle seat port (paragraph [0045]). Wu teaches the system includes intermediate vials to dilute a sample when necessary and the system obtains a sample, deposits the sample in respective intermediate vial for dilution (paragraph [0065]). Wu teaches vials, such as flow-through vials, may be used as temporary or transitional containers for intermediate/partially-processed samples before they carried on to the next processing step in the system (paragraph [0008]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Petro to incorporate the teachings of vials, such as flow-through vials, for samples and intermediate/partially-processed samples in a system for automated sample analysis of Wu (paragraphs [0008],[0045],[0065]; Fig. 1) to provide: wherein the first liquid chromatography apparatus includes one or more primary vials which collect the sample flow. Doing so would have a reasonable expectation of successfully improving automation and processing of the sample flow throughout the system and allowing for use of temporary or transitional containers for intermediate/partially-processed samples before they carried on to the next processing step as discussed by Wu (paragraphs [0008],[0045],[0065]; Fig. 1).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Petro in view of Sims as applied to claim 1 above, and further in view of Jochum (US 20040020308 A1).
Regarding claim 7, modified Petro fails to explicitly teach: wherein the purified sample fraction flow is no greater than 50% of the purified sample flow.
Jochum teaches an apparatus for monitoring fluid flow within a liquid chromatography system, wherein the system includes a flow splitting device having a fluid restrictor connected between the outlet of the flow splitting device and a chromatography column (abstract; Fig. 3). Jochum teaches the flow splitting device (Fig. 3, element 62) splits flow into a flow to the chromatography column and a flow to waste (Fig. 3). Jochum teaches the waste flow is substantially larger than the column flow; and provided that the split ratio is greater than 99:1, the resulting error is less than 1% (paragraph [0098]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the system of modified Petro to incorporate the teachings of a flow splitter that provides a waste flow larger than a column flow of Jochum (paragraph [0098]; Fig. 3) to provide: wherein the purified sample fraction flow is no greater than 50% of the purified sample flow. Doing so would have a reasonable expectation of successfully providing a desired flow ratio and pressure to the purified sample fraction flow as taught by Jochum (paragraph [0098]).
Response to Arguments
Applicant’s arguments, see pages 6-11, filed 04/13/2026, with respect to the rejection(s) of claims 1-8 under 35 U.S.C. 103, specifically regarding amended claim 1, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Petro et al. (US 20030089663 A1) in view of Sims (US 20120240666 A1; cited in the IDS filed 09/29/2022).
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., Remarks, page 4, second paragraph, “continuous bio-processing” and “automated diverting of a fraction of the purified sample flow to the second liquid chromatography apparatus 50 for analysis thereby”; Remarks, page 10, first paragraph, “split a single flow into a second-dimensional column flow and an effluent stream”) 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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fogwill et al. (US 20190369064 A1; cited in the OA filed 09/25/2025) teaches a chromatography system (abstract), wherein the restrictors 507, 513, 515 are designed to establish a 100:1 split ratio between the MS detector 509 and waste 519; and 99% to a detector and 1% to waste (paragraph [0036]).
Power et al. (US 20160113977 A1; cited in the OA filed 09/25/2025) teaches a liquid chromatography analysis wherein the eluate was split post-column in a way that a part of it (30%) was fed to ESI-MS and the rest (70%) went to the waste (paragraph [0294]).
Chordia et al. (US 20090165873 A1; cited in the OA filed 02/06/2026) teaches a splitter for pressurized primary flow stream (abstract) and flow splitters for use in fluidic systems including chemical instrumentation systems such as chromatographic, extraction and reaction systems (paragraph [0002]). Chordia teaches the main flow which exits the separation column is first split by a balanced flow restrictor pair into major and minor flowstreams (paragraph [0042]). Chordia teaches pressure balancing the first splitter minimizes the effect of the physical properties of the mobile phase on the split ratio (paragraph [0047]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY H NGUYEN whose telephone number is (571)272-2338. The examiner can normally be reached M-F 7:30A-5:00P.
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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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/HENRY H NGUYEN/Primary Examiner, Art Unit 1758