FINAL ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Amendments and Status of the Claims
2. This action is in response to papers filed 26 May 2026 in which claims 23, 78, 80, and 86-90 were amended, claims 77, 79, and 91were canceled, and new claims 96-98 were added. All of the amendments have been thoroughly reviewed and entered.
3. Newly submitted claims 96 and 97 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: New claim 96 is identical to original claim 1, which was previously noted as lacking unity in the Requirement for Restriction mailed 24 October 2025. New claim 97 lacks unity with the chip of claim 23, as the claim does not actually require the chip of claim 23; thus, there is no shared technical feature.
Since Applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 96-97 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should Applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
4. Any previous objections and/or any previous rejections not reiterated below are withdrawn in view of the amendments.
5. Applicant’s arguments have been thoroughly reviewed and are addressed following the rejections necessitated by the amendments.
6. Claims 23, 78, 80, 82-95, and 98 are under prosecution.
7. This Office Action includes new rejections necessitated by the amendments.
Drawings
8. The drawings were received on 26 May 2026. These drawings are accepted.
Claim Rejections - 35 USC § 112
9. 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.
10. Claim 90 is 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 90 is indefinite in the recitation “the specimen grin,” which lacks antecedent basis in the previous recitation of “specimen grids.)
Claim Rejections - 35 USC § 103
11. 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.
12. 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.
13. Claims 23, 78, 80, 82-84, 86-89, 92-95, and 98 are rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (U.S. Patent Application Publication No. US 2017/0131266 A1, published 11 May 2017), Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003), Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002), and Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007).
It is noted that the courts have held that “while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In addition, “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). Therefore, the various uses recited in the claims (e.g., detection of an analyte is a test solution) fail to define additional structural elements of the claimed biochip. Because the prior art cited below teaches the structural elements of the claims, the claims are obvious. See MPEP § 2114.
MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, counsel’s mere arguments cannot take the place of evidence in the record.
It is noted that the Response above should not be construed as an invitation to file an after final declaration. See MPEP 715.09.
Regarding claims 23, 86, and 88, Schwartz et al. teach a biosensor chip (paragraph 0063) comprising a transparent substrate (paragraph 0067) functionalized with a self-assembled monolayer (paragraph 0075). Schwartz et al. also teach a detection region (i.e., compartment) comprising a surfactant-aptamer layer, wherein the surfactant is cationic and the interface is present between a liquid crystal and a polar solvent (paragraph 0015), wherein the polar solvent is aqueous (paragraph 0019) and wherein the aptamer is a nucleic acid (i.e., oligonucleotide; paragraph 0010). Schwartz et al. also teach the biochip as the added advantage of allowing detection in ambient light without the need for electrical power of molecular labels (paragraph 0044). Thus, Schwartz et al. teach the know techniques discussed above.
While Schwartz et al. teach a plurality of detection areas, in the form of array compartments; paragraph 0063), Schwartz et al do not teach the claimed spacer or cover.
However, Schleifer teaches an array of detection regions, in the form of reaction areas 60 on substrate 30, having gaskets 34 thereon and further comprising openings, in the form of ports or inlets and outlets, including opening 62, which is both centered and on the side (Figures 4-5 and paragraphs 0052-0056). The spacer does not cover the reaction regions (i.e., the detection regions; Figures 4-5). Schleifer further teaches single gaskets with multiple openings (paragraph 0054), and that a cover 42 is disposed on spacer 34 (Figure 2A and paragraph 0035). Schleifer also teaches the cover is transparent (paragraph 0051), and that the device has the added advantage of forming a fluid tight seal to contain a sample during a binding reaction (paragraph 0011). Thus, Schleifer teaches the known techniques discussed above.
In addition, the courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)). See MPEP §2144.04.
Thus, any arrangement of the opening is an obvious variant of the teachings of the cited prior art.
It is reiterated that the courts have held that apparatus claims cover what a device is, not what a device does.
It is noted that the placement of a single gasket to form the array of reaction regions (i.e., the claimed detection regions) forms a grid, which can be used to assay different specimens. In addition, the specification contains no limiting definition of a “specimen grid.” Therefore, the various uses recited in the claims (e.g., analysis and sample injection, using the grid for specimens) fail to define additional structural elements of the claimed biochip, and the claim has been given the broadest reasonable interpretation consistent with the teachings of the specification regarding a “specimen grid” (In re Hyatt, 211 F.3d1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000) (see MPEP 2111).
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
While Schwartz et al. teach the nucleic acids are single stranded (paragraph 0014), and that nucleic acids hybridize to one another (and thus have complementary sequences; paragraph 0010), and while Schwartz et al. teach the use of a surfactant to achieve homeotropic alignment (paragraph 0046), and that the desired range is 20-40% (paragraph 0081), Schwartz et al. do not teach the nucleic acids detect an RNA sequence, the detection of pathogenic virus, or the surface coverage of claims 23 and 88.
However, Abbott et al. teach a liquid crystal assay device comprising a substrate functionalized via deposition of a biomolecule recognition element (Abstract). Abbott et al. also teach the biological recognition element is an RNA molecule as well as the detection of viruses (paragraph 0024), including the influenza virus (paragraph 0012), which is a pathogenic RNA virus. Abbott et al. also teach a surfactant concentration of 0.1 nM to 0.9 mM (i.e., claims 23 and 86; paragraph 0095), which encompasses the claimed range.
It is noted that Figure 7B of the instant specification shows that concentrations of the surfactant DTAB result in the instantly claimed surface coverage e.g., 0.5 mM); Abbott et al. teach this concentration as discussed above, as well as the use of DTAB (i.e., claims 23 and 88; paragraph 0095), and that the device has the added advantage of allowing selective recognition of a target species (Abstract). Thus, Abbott et al. teach the known techniques discussed above.
It is noted that the courts have stated where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01).
The courts have also found that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record.
It is noted that the Response above should not be construed as an invitation to file an after final declaration. See MPEP 715.09.
While Schwartz et al. and Abbott et al. teach polarizers (paragraphs 0059 and 0111, respectively), and while Schleifer teach transparent covers (paragraph 0051),
none of the previously cited prior art teaches the polarizers are part of the chip.
However, Ong teaches liquid crystals having a first polarizer 105 on substrate 110 having liquid crystals thereon, as well as a second polarizer 155 on cover (i.e., second substrate) 150, which is above the liquid crystals (i.e., claim 81; Figure 1A and paragraph 0008). Ong also teaches the device has the added advantage of preventing light from a light source from passing through the device (paragraph 0008). Thus, Ong teaches the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of the cited prior art to arrive at the instantly claimed chip with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a chip having the added advantages of:
Allowing detection in ambient light without the need for electrical power of molecular labels as explicitly taught by Schwartz et al. (paragraph 0044);
Forming a fluid tight seal to contain a sample during a binding reaction as explicitly taught by Schleifer (paragraph 0011);
Allowing selective recognition of a target species as explicitly taught by Abbott et al. (Abstract); and
Preventing light from a light source from passing through the device as explicitly taught by Ong (paragraph 0008).
In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in chips useful for detection of biological molecules.
Regarding claims 78 and 80, the chip of claim 23 is discussed above. Schleifer teaches the thickness of the spacer (i.e., gasket) is up to 2.5 mm (i.e., 2500 micrometers; paragraph 0045), which encompasses the claimed range of claim 78. Schleifer also teaches the substrate is square has dimensions of 4 to 80 mm (paragraph 0063), which includes the values of claim 80.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
Regarding claim 82, the chip of claim 23 is discussed above. Schwartz et al. teach the claimed surfactants (paragraph 0057).
Regarding claim 83, the chip of claim 23 is discussed above. Schwartz et al. teach thermotropic liquid crystals (paragraph 0016), as do Abbott et al. (paragraph 0075).
Regarding claim 84, the chip of claim 23 is discussed above. Schwartz et al. teach 5CB (paragraph 0057), as do Abbott et al. (paragraph 0080).
Regarding claim 87, the chip of claim 23 is discussed above.
It is noted that the subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. “Wherein” clauses are examples of language that may raise a question as to the limiting effect of the language in a claim. See MPEP 2103 I.C. and MPEP § 2111.04.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
Regarding claim 89, the chip of claim 23 is discussed above. Schwartz et al. teach a plurality of detection areas (i.e., array compartments), wherein each one includes a surfactant nucleic acid (i.e., aptamer) interface, and wherein each nucleic acid (i.e., aptamer) in each compartment is different (paragraph 0063). Abbott et al. also teach an array of areas each with a different nucleic acid (i.e., recognition agent; paragraph 0069), as well as aqueous solvents (paragraph 0019).
Regarding claim 92, the chip of claim 23 is discussed above.
It is reiterated that the courts have held that apparatus claims cover what a device is, not what a device does. Therefore, the various uses recited in the claims (e.g., observing emanated light) fail to define additional structural elements of the claimed biochip. Because the cited prior art teaches the structural elements of the claims, the claims are obvious.
In addition, Schwartz et al. teach detection via light microscopy (paragraph 0020), as do Abbott et al. (paragraph 0096).
Regarding claim 93, the chip of claim 23 is discussed above. Schwartz et al. teach the use of nematic liquid crystals (paragraph 0057), and that the addition of the nucleic acid (i.e., aptamer) induces a planar orientation, which then becomes homeotropic upon ligand binding (paragraph 0090). In addition, Abbott et al. teach nematic crystals (paragraph 0075), and that the device is rubbed so as to maintain a planar orientation of the liquid crystal (paragraph 0108). Thus, the detection regions are planar nematic prior to analyte hybridization.
In addition, it is reiterated that the subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined. As a general matter, the grammar and intended meaning of terms used in a claim will dictate whether the language limits the claim scope. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation. “Wherein” clauses are examples of language that may raise a question as to the limiting effect of the language in a claim.
It is also reiterated that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed orientation merely represents routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
Regarding claims 94-95, the chip of claim 23 is discussed above.
It is reiterated that the courts have held that apparatus claims cover what a device is, not what a device does. Therefore, the various uses recited in the claims (e.g., observing emanated light) fail to define additional structural elements of the claimed biochip. Because the cited prior art teaches the structural elements of the claims, the claims are obvious.
In addition, Schwartz et al. binding of the target results in an increase in homeotropic area (i.e., orientation; claim 94), which results in a change in polarization of emitted light microscopy (i.e., claim 95; paragraph 0025).
Regarding claim 98, the chip of claim 23 is discussed above. Schleifer teaches the biochip (i.e., substrate) is square and has dimensions of 4 mm to 80 mm (paragraph 0063), which is 0.4 cm to 8 cm, and therefore includes the values of claim 98.
It is further reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
14. Claim 85 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (U.S. Patent Application Publication No. US 2017/0131266 A1, published 11 May 2017), Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003), Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002), and Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007), as applied to claim 23 above, and further in combination with Jacobine et al. (U.S. Patent No. 5,516,455, issued 14 May 1996).
Regarding claim 85, the chip of claim 23 is discussed above in Section 13.
While Abbott et al. teach 5CB (paragraph 0080), and while Schwartz et al. teach mixtures including 5CB and 5CT (paragraph 0057), none of the previously cited prior art teaches the functionally equivalent claimed combination and amounts.
However, Jacobine et al. teach liquid crystals (Abstract) comprising the claimed compounds in the claimed amounts (Example 1), and that the liquid crystals have the added advantage of good optical contrast between on and off states (column 2, lines 5-15). Thus, Jacobine et al. teach the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that the courts have also found that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the functionally equivalent liquid crystal of Jacobine et al. with the previously cited prior art to arrive at the instantly claimed chip with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in a chip having the added advantage of good optical contrast between on and off states as explicitly taught by Jacobine et al. (column 2, lines 5-15). In addition, it would have been obvious to the ordinary artisan that the known techniques of Jacobine et al. could have been combined with the cited prior art with predictable results because the known techniques of Jacobine et al. predictably result in a functionally equivalent liquid crystal.
15. Claims 86-88 are rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (U.S. Patent Application Publication No. US 2017/0131266 A1, published 11 May 2017), Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003), Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002), and Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007), as applied to claim 23 above, and further in combination with Abbott et al. (U.S. Patent Application Publication No. US 2003/0194753 A1, published 16 October 2003, hereafter “Abbott2”).
It is noted that while claims 86-88 have been rejected as described above, the claims are also obvious using the interpretation outlined below.
Regarding claims 86-88, the chip of claim 23 is discussed above in Section 13.
None of the previously cited prior art teaches the concentration of claim 87.
However, Abbott2 teaches liquid crystals comprising receptor molecules (paragraph 0002), in the form of DNA or RNA molecules (paragraph 0089), wherein analyte detection in the femtomolar range (i.e., claim 87; paragraph 0098). Abbott2 further teaches the surfactant is present at a concentration of 1 mM (i.e., claim 86; paragraph 0095). Abbott2 also teaches the surfactant is DTAB (i.e., dodecyltrimethylammonium bromide; paragraph 0009), which, at a concentration of 1mM, results in the claimed surface coverage as discussed above (i.e., claim 88). Abbott2 further teaches analyte detection in the femtomolar range (i.e., claim 87; paragraph 0098), and that the surfactant concentration has the added advantage of being the critical aggregation concentration (paragraph 0095). Thus, Abbott2 teaches the known techniques discussed above.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Abbott2 with the previously cited prior art to arrive at the instantly claimed chips with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in chips having the added advantage of providing the critical aggregation concentration as explicitly taught by Abbott2 (paragraph 0095). In addition, it would have been obvious to the ordinary artisan that the known techniques of Abbott2 could have been combined with the cited prior art with predictable results because the known techniques of Abbott2 predictably result in a viable liquid crystal format for use with nucleic acids.
16. Claim 90 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (U.S. Patent Application Publication No. US 2017/0131266 A1, published 11 May 2017), Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003), Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002), and Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007), as applied to claim 23 above, and further in combination with Glaeser et al (U.S. Patent Application Publication No. US 2017/0004953 A1, published 5 January 2017).
Regarding claim 90, the chip of claim 23 is discussed above in Section 13.
While Schwartz et al. and Abbott et al. each teach the biochip is used in microscopy (paragraphs 0020 and 0096, respectively), and while Schleifer and Abbott et al. each teach microscope slides as substrates (paragraphs 0087 and 0095, respectively), none of the previously cited prior art teaches a functionally equivalent grid having the specifically claimed dimensions.
However, Glaeser et al. teach microscopy specimens comprising surfactants (Abstract) for use with samples having biological macromolecules (paragraph 0023), wherein microscopy grids having a diameter of 3.05 mm, a thickness of 20 (i.e., 3 to 100) microns, and detection regions (i.e. mesh size) of approximately 90 (i.e., about 100) microns (paragraph 0021). Thus, Glaeser et al. teach the known techniques utilizing the claimed functionally equivalent grid.
It is reiterated that the courts have stated where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.
Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art.
Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record, and that the Response above should not be construed as an invitation to file an after final declaration.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have utilized the functionally equivalent grid of Gleaser et al. with the previously cited prior art to arrive at the instantly claimed chip with a reasonable expectation of success. It would have been obvious to the ordinary artisan that the known techniques of Glaeser et al. could have been combined with the cited prior art with predictable results because the known techniques of Glaeser et al. predictably result in a viable functionally equivalent grid for use with biological molecules.
17. Claim 91 is rejected under 35 U.S.C. 103 as being unpatentable over Schwartz et al. (U.S. Patent Application Publication No. US 2017/0131266 A1, published 11 May 2017), Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003), Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002), and Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007), as applied to claim 23 above, and further in combination with Zhou et al. (Nanomaterials, vol. 6, pages 1-9, published 1 December 2016).
Regarding claim 91, the chip of claim 23 is discussed above in Section 13.
None of the previously cited prior art teaches DMOAP.
However, Zhou et al. liquid crystal interfaces comprising nucleic acids (i.e., DNA; Title and Abstract), wherein a substrate is functionalized with DMOAP and which utilize specimen grids (Section 3.4). Zhou et al. also teach the interfaces have the added advantage of providing a platform for a universal tunable interface for sensing and diagnosis (“Conclusion”). Thus, Zhou et a; teach the known techniques discussed above.
It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhou et al. with the previously cited prior art to arrive at the instantly claimed chips with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in chips having the added advantage of providing a platform for a universal tunable interface for sensing and diagnosis. as explicitly taught by Zhou et al. (“Conclusion”). In addition, it would have been obvious to the ordinary artisan that the known techniques of Zhou et al. could have been combined with the cited prior art with predictable results because the known techniques of Zhou et al. predictably result in a viable liquid crystal format for use with nucleic acids.
Response to Arguments
18. Applicant's arguments filed 26 May 2026 (hereafter the “Remarks”) have been fully considered but they are not persuasive for the reasons discussed below.
A. Pages 8-11 of the Remarks discuss the amendments, which have been entered, and the previous objections and obviousness rejections, which are withdrawn in view of the amendments.
B. Applicant argues on pages 11-12 of the Remarks that Scwartz et al. fails to teach certain elements of the instant claims as amended. Thus, Applicant argues Schwartz et al individually.
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Specifically, as noted in the new rejections necessitated by the amendments, each and every element of the instant claims is taught by the combined cited prior art.
C. In response to Applicant's argument on page 13 of the Remarks that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
19. No claim is allowed.
20. 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).
22. 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.
23. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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, Anne Gussow can be reached at 571-272-6047. 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.
Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683
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