DETAILED CORRESPONDENCE
Summary
This Office Action based on the Vermeulen, et al. application filed with the Office on 10 October 2022.
Claims 1-62 are currently pending, and claims 1-49 have been fully considered.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-49 in the reply filed on 4 March 2026, is acknowledged.
Claims 50-62 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4 March 2026.
Priority
The instant application is a US National Stage Application of an International Patent Application, PCT/US2021/026716, filed on 9 April 2021. The International Patent Application claims priority to US Provisional Applications, 63/094,861, 63/091,250, 63/065,594, 63/021,251, and 63/007,927, filed on 21 October 2020, 13 October 2020, 14 August 2020, 7 May 2020 and 9 April 2020, respectively. Thus, the earliest effective filing date for the instant application is 9 April 2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted regarding the present application filed on 8 March 2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 1200b shown in Figure 12B; 1300a shown in Figure 13A; 1300b shown in Figure 13B; 1704, 1706 shown in Figure 17; 2000 shown in Figure 20; 2404a shown in Figure 25B; 3000 shown in Figure 30; and 4312, 4314 shown in Figure 43C. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 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 4 and 20-22 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.
Claim 4 is drawn dependent to claim 1 and recites the limitation "the stage". There is insufficient antecedent basis for this limitation in the claim.
Claim 20 is drawn dependent to claim 1 and recites the limitation "the microfluidic cell". There is insufficient antecedent basis for this limitation in the claim.
Claim 21 is drawn dependent to claim 1 and recites the limitation "the microfluidic cell". There is insufficient antecedent basis for this limitation in the claim.
Claim 22 is drawn dependent to claim 1 and recites the limitation "the stage". There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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, 2, 4, 6-16, 23-28, 30, 31, 33-35, 40, 41 and 45 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a US Patent Application Publication to Duer (US 2009/0068668 A1; hereinafter, “Duer”).
Regarding claim 1, Duer discloses an integrated photonic system (100) for biosensing (Figures 1A, 1B, 1C, 1D, 2; [0010]-[0011]: "sensor system for detecting a biologically active analyte ... substrate comprising a plurality of waveguides and a plurality of optical sensing sites in optical communication with one or more waveguide of the substrate ... planar lightwave circuit"; [0018]-[0020], [0116]: "sensing system 100"), the system comprising:
a cartridge (104) comprising a sensor photonic integrated subcircuit (108, 112) the cartridge configured to receive a biological sample ([0010]: "a substrate comprising a plurality of waveguides and a plurality of optical sensing sites in optical communication with one or more waveguide of the substrate"; [0011]: "adapter can be further configured to removably couple with the substrate"; [0116]: "Substrate 104 can include waveguides 108 and sensing sites 112 in relation to waveguides 108"; [0117]: "Adapter chip 114 of this embodiment and all other embodiments can optionally be configured to provide removable coupling for substrate 104");
an interrogator photonic circuit (114, 116; [0010]: "at least one adapter configured to couple with the substrate and provide optical communication between the light source, the waveguides of the substrate, and the detector"; [0116]: "a switchable light source 102", "Adapter chip 114", "in coupling waveguides 128, out-coupling waveguides 126 and combiners 130"; [0117]: "optical fibers 118") optically coupled to the cartridge and comprising:
(i) a light source (102) configured to generate light; and
(ii) one or more waveguides (118,126,128,130) configured to carry the light,
wherein the light is used to determine a characteristic of the biological sample in the cartridge ([0155]-[0157]: "measurable change in the second light wave can result when the sensor discriminates or interacts with the target").
Regarding claim 2, Duer teaches a stage ([0133]: “… an X, Y, Z, θ robotic system 203 for positioning substrate 204 as required within working system 201. X,Y,Z,θ robotic system 203 can be a translation stage …”)
Regarding claim 4, Duer teaches a thermoelectric heater/cooler ([0143]: “… a thermoelectric cooler (TEC). Thermal transfer element 403 is a temperature control system useful for heating or cooling a chip, for example, substrate 404. Although the thermal transfer element may be referred to herein as a cooling element, it is to be understood that where the thermal transfer element is configured to increase and decrease the temperature of a chip, the component functions essentially as a heating and as a cooling element depending on the induced direction of the electrical current.”).
Regarding claims 6-10, Duer teaches an alignment module ([0134]: “… system can further include an aligning system (not shown). An aligning system can include one or more light sources, one or more detectors and one or more cameras for active detection of the position of the substrate of the invention …”).
Regarding claim 11, Duer teaches a lens ([0146]: “The adapter ... can include ... at least one lens ... configured to manipulate and couple light from the light source to the substrate”).
Regarding claims12-14, Duer teaches a control circuit configured to control the light ([0135]: “Electronic boards 207 can control switchable light source 202 and any other light source present in the system. Electronic boards 207 can be adapted to read any or all of the detectors and cameras in working system 201”).
Regarding claim 15, Duer teaches optical fiber ([0012]: “Coupling of the system components can be by fiber optic.”).
Regarding claim 16, Duer teaches a microfluidic cell ([0030]: “The substrate can further include one or more microchannel and one or more reservoirs in fluid communication with one or more optical sensing site. In one embodiment the system further includes a fluidics layer coupled to the substrate and includes one or more microchannel and one or more reservoirs in fluid communication with one or more optical sensing site.”).
Regarding claims 23 and 24, Duer teaches Mach Zehender interferometer (MZI) and ring resonators ([0006]: “In this case, channel waveguides are used together with interferometric devices such as Mach Zehender Interferometers (MZI) or ring-resonators.”).
Regarding claim 25, Duer teaches silicon, silica or silicon nitride ([0150]: “The waveguides disclosed herein can be made up of Silicon, Silica (SiO2) and derivatives thereof, silicon oxynitride (SiON) and derivatives thereof, silicon nitride (SiN) and derivatives thereof …”).
Regarding claim 26, Duer teaches tunable light source ([0026]: “The light generator can be selected from the group including a broad-band source, a source with one or more discrete spectral lines and a tunable source.”).
Regarding claims 27 and 28, Duer teaches a robotic device that can discard the cartridge ([0133]: “… working system 201 can further include an X, Y, Z, θ robotic system 203 for positioning substrate 204 as required within working system 201. X,Y,Z, θ robotic system 203 can be a translation stage with several degrees of freedom for receiving or accepting substrate 204, holding it in place, and aligning it in relation to the rest of working system 201. As desired, at the end of a run X, Y, Z, θ robotic system 203 can eject substrate 204 from working system 201.”).
Regarding claim 30, Duer teaches the shared limitations with instant claim 1, as outlined above.
Regarding claim 31, Duer teaches an alignment system ([0134]).
Regarding claim 33, Duer teaches determining biological sample characteristic based on change in resonance ([0007]) or interference ([0006]).
Regarding claims 34 and 35, Duer teaches the waveguide coupled to a probe ([0219]: “By using SBEX on waveguides, simultaneous detection of several different polymorphisms can be done with ease.”).
Regarding claims 40 and 41, Duer teaches an optically active component on the probed as a fluorophore ([0217]: “Evanescent waves generated in a waveguide substrate will only excite fluorescently labeled analyte DNA molecules that are bound to stationary capture oligonucleotides.”).
Regarding claim 45, Duer teaches Mach Zehender interferometer (MZI) and ring resonators ([0006]: “In this case, channel waveguides are used together with interferometric devices such as Mach Zehender Interferometers (MZI) or ring-resonators.”).
Allowable Subject Matter
Claims 3, 5, 17-20, 29, 32, 36-39, 42-44 and 46-49 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The Duer reference is the closest prior art to the instant claims. However, Duer does not anticipate or render obvious the limitations of the indicated claims.
Interview with the Examiner
If at any point during the prosecution it is believe an interview with the Examiner would further the prosecution of an application, please consider this option.
The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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, Luan Van can be reached at (571)272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
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