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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 7/29/2026 has been entered.
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 33-42 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.
Claims are confusing as to intent because, while the claims refer to adding an agent in step (c) and adding an agent in step (e), it can not be determined how or if the addition operations are intended to require separate addition operations. Though step (c) and step (e) use different wording to refer to the agents added in these additions, the claims do not set forth recitations that definitively identify if or that the agents of these addition operations are intended to be different added agents. Further, though the methods defined by these claims do identify in step (d) that a binding occurs to the affinity capture agent, step (e) sets forth no timing requirements in order that it can be definitively be ascertained if or how its addition operation is intended to be differentiated from the addition operation of step (c). Accordingly, the intended metes and bounds of the claims can not be definitely ascertained through the recitation of these process operations as if they are separate process operations without definitively identifying through the recitations of the claims if or how they are intended to be separate and distinctive addition operations.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 33-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over as anticipated by Hidson (US 2015/0225777) in view of WO 2018/156935.
Hidson sets forth methods involving providing shaped particles wherein the particles include shapes comprising a three-dimensional cavity or void open to an external environment constituting the shapes as defined by the claims, loading cells into a void of the shaped particles (see Figures, Abstract, paras [0004], [0030], [0056], [0092], [0136] and [0149]).
Regarding claims 33-42, Hidson et al. discloses operations involving addition of secretion capture moieties with affinity to secreted molecules sufficient to meet the requirements of the addition operations (c) and (e) of the claims (para [0056]){note, also, rejection under 35USC112 above}. Further, Hidson et al. discloses heating and disruption operations sufficient to meet the incubation and secretion operations defined by step (d) of claims 33-42(para [0136]).
Hidson et al. differs from applicants’ claims in that its methods do not require particle sizes as claimed. However, Hidson et al. does provide for employment particles falling in overlap with those claimed for purposes of achieving acceptable arrays for analysis (paras [0062] & [0063]). Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any particle size provided for by Hidson et al. in forming the particles of the processes of Hidson et al. for the purpose of achieving acceptable arrays for analysis in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Hidson et al. differs from applicants’ claims in that its methods do not require analyzation operations as specified by the claims. However, WO 2018/156935 does provide for employment of analysis operations as defined by applicants’ claims in closely related particle array preparation methods for purposes of analyzing and sorting derived materials (paras [0038], [0040], [0057], [0066], [0068], [0086], [0088]-[0109]). Accordingly, it would have been obvious for one having ordinary skill in the art before the effective date of the invention to have utilized any of the analyzation operations provided for by WO 2018/156935 in handling the arrays of Hidson et al. for the purpose of achieving acceptable analysis and sorting of the realized arrays in order to arrive at the processes of applicants’ claims with the expectation of success in the absence of a showing of new or unexpected results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to John Cooney whose telephone number is 571-272-1070. The examiner can normally be reached on M-F from 9 to 6. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Heidi Riviere Kelley, can be reached on 571-270-1831. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN M COONEY/ Primary Examiner, Art Unit 1765
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