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
Applicant's arguments filed August 3 have been fully considered but they are not persuasive. Applicant has amended claim 1 to recite a first interrogation signal including a plurality of wavelengths including a shortest wavelength, and argued that the amended claim is not taught by the prior art. Applicant has also argued that claim 1 is definite, and should not be rejected under 35 U.S.C. 112(b). The Examiner respectfully disagrees.
With respect to the rejection under 35 U.S.C. 112(b), the Examiner maintains that the claim is unclear with respect to the spacing of the plurality of features as the distance between the features is dependent on the shortest wavelength in a first interrogation signal. Claim 1 has been amended to recite a first interrogation signal including a plurality of wavelengths including a shortest wavelength; however, there is no indication that the shortest wavelength is a known parameter, thus it is unclear how one of ordinary skill would determine the spacing of the plurality of features based on an unknown parameter. As such, it is unclear how the spacing of the plurality of features depends on the shortest wavelength as the wavelength would have to be known prior to forming the device.
With respect to the prior art, Applicant has argued that reference to Schulz et al., do not teach a plurality of features wherein the inter-feature spacing is less than or equal to λm/2 as recited in the claim. As detailed above, the limitations regarding the inter-feature spacing of the plurality of features is unclear as λm would have to be known prior to forming the plurality of features on the device. As currently presented, λm is an unknown value, thus it is not clear how one would form the plurality of features based on an unknown. Reference to Schulz et al., is cited for teaching an optical element comprising a substrate having an organic layer and a plurality of elevations extending from the organic layer wherein the extension have a sidewall and a tip. The Examiner has previously noted that the claim has been read in light of the rejection under 35 U.S.C. 112(b) in which the spacing of the plurality of features is unclear, and has interpreted the spacing of the prior art elevations as being less than or equal to λm. As such, the Examiner maintains that reference to Schulz et al., meets the claim limitations. Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the references cited below, thus the rejection is maintained.
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, 3, 4, 7-14, and 24 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.
For claim 1, the Examiner is unable to determine the metes and bounds of λm as it relates to the spacing of the plurality of features. Claim 1 states that the inter-feature spacing is less than or equal to λm/2 in which λm appears to be an unknown value. As such, it is unclear how the inter-feature spacing is dependent on an unknown value as one would have to know the value of λm prior to forming the apparatus to ensure accurate spacing of the plurality of features. Claims 3, 4, 7-14, and 24 depend directly or indirectly from claim 1 and are also indefinite.
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.
Claim(s) 1, 3, 4, 7-11, 14, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schulz et al., (US 2015/0309214).
For claim 1, Schulz et al., teach an optical element (sample holder, figure 3F) comprising a substrate (body, paragraph 0030, figure 1A #10) having an organic layer (first surface, paragraph 0034, figure 1C #1), and a plurality of elevations extending from the organic layer (paragraph 0036, figure 1D #11) wherein the extensions have a sidewall and a tip (figure 1D #11). The Examiner notes that the substrate, plurality of side walls and plurality of tips, taught by Schulz et al., are structurally identical to that of the instant claims, thus they meet the limitation of a sample-collection surface. The Examiner also notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which it is unclear how the spacing of the plurality of features is based on an unknown wavelength prior to forming the device. For the purposes of examination, the Examiner is reading Schultz et al as meeting the plurality of features as having inner-feature spacing less than or equal to λm/2 ( in the absence of a specific spacing, the spacing of Schultz has an interfeature spacing and a wavelength that meets this limitation).
For claim 3, Schulz et al., teach the optical element having a second surface (top layer of substrate 10, figure 1D) distal to the first surface wherein the second surface comprises an anti-reflection layer (paragraph 0030, figure 1D #7).
For claim 4, Schulz et al., teach the anti-reflection layer being a coating (paragraph 0030).
For claim 7, the Examiner notes that the claimed first interrogation signal is not a structural element of the apparatus, thus the angle of incidence on the body is also not a structural limitation. As such, the device taught by Schulz et al., reads on the claim.
For claims 8 and 9, Schulz et al., teach the substrate having a second surface (bottom layer of substrate 10, figure 1D) distal to the first surface wherein the second surface is a reflector (paragraph 0030, figure 1D #10). Schulz et al., teach the substrate comprises or consists of silicone (paragraph 0030) which is a material that reflects light. The Examiner notes that the term "reflector" is not claimed as an additional structure, thus the substrate of Schulz et al., reads on the claimed reflector. Additionally, the Examiner notes that the phrase "configured to" does not impart structure to the claim, but instead represents the intended use of the device.
For claim 10, Schulz et al., teach the reflector between the first and second surfaces (figure 1D #7).
For claim 11, Schulz et al., teach an anti-reflection layer on the first surface and the plurality of extensions (paragraph 0049, figure 3F #'s 7 and 12).
For claim 14, the claim does not recite any structural elements in addition to claim 1, thus the device of Schulz et al., as detailed for claim 1 reads on the limitations of claim 14.
For claim 24, Schulz et al., teach the substrate as a monolith (figure 1A #10).
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.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schulz et al., (US 2015/0309214) in view of Montagu (US 2004/0125370).
Regarding claims 12 and 13, Schulz et al., do not teach an apparatus comprising a light source, a spectral filter, and a detection system.
Montagu teaches optically active substrates wherein an optical scanning system having at least one light source, several optical detectors, and spectral filters is utilized to interrogate the optically active substrate (paragraph 0043). Montagu teaches that it is advantageous to provide a spectral filter as a means of detecting wavelength specific radiation (paragraph 0043).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Schulz et al., to include an optical scanning system having at least one light source, several optical detectors, and spectral filters in order to detect wavelength specific radiation as taught by Montagu.
Conclusion
THIS ACTION IS MADE FINAL. 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 DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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