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 .
Status of Claims
Claims 1, 4, 6-8, 10 and 15 have been amended. Claim 12 has been cancelled. Claims 1-11 and 15-17 have been examined.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 has already recited that the opening of said coil is configured to accommodate a vessel. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-6, 8-11 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Schroeder et al (US 2006/0133954, Pub Date: 06/22/2006, IDS) in view of Anderson et al. (WO 2009/108501).
Regarding claims 1 and 15, Schroeder teaches throughout the publication a method and device for dispersing magnetic particles, said method comprising: (a) in a vessel, combining at least one permanent magnet and said magnetic particles in a liquid phase; and (b) triggering a fluctuating motion of said permanent magnet using a magnetic field, wherein said magnetic field is generated by an external magnetic, wherein said external magnet is an electromagnet; thereby dispersing said magnetic particles (paragraphs 0012 and 0021; see Figure 1, external magnetic field 38 generated by external magnetic field generator 36 which can be magnetic coils, paragraph 0023). Schroeder further teaches a device (paragraph 0010) comprising: (i) means for generating a magnetic field (magnetic field driver); and (ii) a control unit configured to modify said magnetic field over time in order to perform the method of claim 1 (paragraph 0024), wherein said means for generating a magnetic field is a coil (paragraph 0023); said vessel comprising a permanent magnet and functionalized magnetic particles (paragraphs 0020-0021).
Schroeder fails to teach that the permanent magnet performs a movement in three dimensions, wherein a fluctuating electric current flows through said electromagnetic and wherein the opening of said coil is configured to accommodate the vessel.
Anderson teaches throughout the publication a reaction vessel for mixing a fluid (abstract). More specifically, Anderson teaches throughout the Figures that the vessel 100 includes a chamber 104 and a mixing member 108 located inside the chamber 104. A dual action electromagnetic coil is located around the chamber that holds a fluid that can be stirred in order to mix and distribute solids or liquids in suspension in the sample (see page 6, line 34 – page 7, line 23). Additionally, Anderson teaches the coil portions 121 and 122 are positioned around the chamber portions 101 and 102, which reads on the limitation of the opening of said coil is configured to accommodate the vessel (page 8, lines 11-32; For example, Figure 10). Finally, Anderson teaches that fluctuating electric current flows through the electromagnet coils (page 9, line 22 – page 10, line 15) so that the magnetic mixing member 108 can move in three dimensions (page 10, lines 16 – 26).
It would have been prima facie obvious to one having ordinary skill in the art at the time the invention was filed to substitute for the external magnetic field of Schroeder, a dual electromagnetic coil system that has an opening to accommodate a vessel and fluctuates electric current through the coil to provide an internal mixing magnet member with movement in three dimensions as taught by Anderson because it would have been no more than the simple substitution of one electromagnetic field system for another well-known in the art and since Anderson teaches that the coils surrounding the vessel provides numerous advantages including a simple design that is robust and economical to manufacture and further that the presence of the coils surrounded the vessels is what allows the internal magnet mixing member to be moved in three dimensions. Additionally, it would be obvious that when the method and device of Schroeder were provided with the electromagnetic coil system of Anderson that the control unit of Schroeder would also control the electric currents and coil system in a similar manner to that as described in Schroeder.
Regarding claim 2, Schroeder teaches the method wherein said magnetic particles carry at least one moiety on their surface, wherein said moiety is selected from: (i) a moiety capable of binding a target molecule, said moiety being a an antibody, a portion of an antibody, or a tracer (paragraph 0009) or (ii) a moiety capable of converting at least one starting molecule into at least one product molecule, said moiety being an enzyme or a chemical catalyst (paragraph 0040) or (iii) a moiety capable of forming an adduct with said target molecule (paragraph 0022, invention may be used to immobilize an antibody to provide a binding reagent); wherein said target molecule, is present or suspected to be present in said liquid phase (paragraph 0026).
Regarding claim 3, Schroeder in view of Anderson, as described above, teaches the method further comprising: (c) removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion; and allowing said magnetic particles to gather on said permanent magnet (paragraph 0042); and (d) removing said liquid phase (paragraph 0036).
Regarding claim 4, Schroeder in view of Anderson, as described above, teaches the method wherein after the binding of said target molecule to said moiety, a) a fluctuating motion of said permanent magnet is triggered using a magnetic field; and b) said molecule is separated from the remainder of constituents of said liquid phase (paragraph 0036).
Regarding claim 5, Schroeder in view of Anderson, as described above, teaches the method further comprising: (c) removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion; and allowing said magnetic particles to gather on said permanent magnet; and (d) removing remaining components of a mixture from said vessel (paragraphs 0042 and 0036).
Regarding claim 6, Schroeder teaches the method as described above and further teaches that a wash fluid may be added to the vessel (paragraph 0026). While Schroeder does not explicitly teach the method steps to be conducted for an embodiment utilizing a wash solution, the reference clearly teaches that depending on which embodiments are conducted, a fluctuating motion of said permanent magnet is triggered using a magnetic field to obtain the desired component and further, removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion and allowing said magnetic particles to gather on said permanent magnet; and (d) removing material not bound to said particles from said vessel (paragraphs 0036, 0040 and 0042). As such, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to extend the general method steps taught by Schroeder to an embodiment incorporating a wash solution of Schroder in order to properly conduct the assay and wash away undesired components.
Regarding claim 8, Schroeder teaches the method wherein after said at least one starting molecule is converted into at least one product molecule, a) a fluctuating motion of said permanent magnet is triggered using a magnetic field; and b) at least one product molecule is obtained (paragraph 0040).
Regarding claim 9, Schroeder in view of Anderson, as described above, teaches the method further comprising: (c) removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion; and allowing said magnetic particles to gather on said permanent magnet; and (d) removing said at least one product molecule from said vessel (paragraphs 0042 and 0036).
Regarding claims 10-11, Schroeder in view of Anderson, as described above, teaches the method as described above and further teaches that the invention may be used to immobilize an antibody to provide a binding reagent in an immunoassay, cell fractionations, protein purification, ligand capture or nucleic acid hybridization (paragraphs 0022 and 0040). While Schroeder does not explicitly teach the method steps to be conducted for the embodiment of immobilizing an antibody to create a binding reagent (claimed “forming an adduct”), the reference clearly teaches that depending on which embodiments are conducted, a fluctuating motion of said permanent magnet is triggered using a magnetic field to obtain the desired component and further, removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion and allowing said magnetic particles to gather on said permanent magnet; and (d) removing material not bound to said particles from said vessel (paragraphs 0036, 0040 and 0042). As such, it would have been obvious to one having ordinary skill in the art at the time the invention was filed to extend the general method steps taught by Schroeder to the embodiment of creating an antibody binding agent immobilized on the magnetic particles of Schroder in order to properly obtain the desired binding reagent by magnetic resuspension means described in the method.
Regarding claims 16-17, Schroeder teaches the device wherein said means for generating a magnetic field is configured to receive a vessel such that said vessel is exposed to said magnetic field when in use, wherein said device further comprises said vessel (paragraph 0037).
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schroeder et al. in view of Anderson, as applied to claim 1 above (hereinafter “Modified Schroeder”), and further in view of a’Brassard (US 2005/0013741, hereinafter “Brassard”).
Modified Schroeder teaches the method as described above wherein the method can comprise adding various reagents to the vessel (paragraph 0026). Additionally, Schroeder in view of Anderson generally teaches triggering a fluctuating motion of said permanent magnet using said magnetic field; removing, rendering static, and/or rendering said magnetic field incapable of triggering said motion; and allowing said magnetic particles to gather on said permanent magnet (Schroeder, paragraph 0036, 0040 and 0042).
While Schroder fails to specifically teach that an eluent is one of the reagents that can be added to the vessel and then separating the eluate from particles and magnet, Brassard teaches throughout the publication magnetic separation of magnetic particles (abstract). More specifically, Brassard teaches that an elution liquid can be added to the reaction vessel to abolish binding and obtain the highest concentration possible of the target substance (paragraph 0047) and elute target substances bound to the particles (paragraph 0075).
It would have been prima facie obvious to one having ordinary skill in the art at the time the invention was filed to incorporate within the magnetic particle manipulation method of Schroeder, use of elution liquid as taught by Brassard because it would have been desirable to have the ability to stop binding and separate desired compounds from the magnetic particles.
Response to Arguments
Applicant’s arguments filed 06/12/2026 have been considered but are found to be moot in view of the new grounds of rejection applied to the newly amended claims. While Shroeder does not specifically teach an external electromagnet coil configured to accommodate the vessel to provided fluctuating electric current to flow through the electromagnet and allow the permanent magnet to move in three dimensions, Anderson teaches a vessel and electromagnetic coil system surrounding the vessel, as described above, and thus the claims remain unpatentable.
In order to differentiate the claimed invention from the prior art, Examiner recommends providing further structural limitations regarding properties or placement of the permanent magnetic or external electromagnet coil accommodating the vessel.
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 REBECCA M GIERE whose telephone number is (571)272-5084. The examiner can normally be reached M-F 8:30-4:30.
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, Bao-Thuy L Nguyen can be reached at 571-272-0824. 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.
/REBECCA M GIERE/Primary Examiner, Art Unit 1677
Prosecution Insights