DETAILED 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 .
2. Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113.
Election/Restrictions, Non-Compliant Amendment, and Status of the Claims
3. Applicant’s election without traverse of Group II in the reply filed on 22 December 2025 is acknowledged. However, because Applicant has cancelled all non-elected claims, the Restriction Requirement is withdrawn.
4. Applicant’s amendments filed 22 December 2025 fail to comply with 37 CFR 1.121 for the following reason(s): none of new claims 77-95 are marked as “new.”
It is emphasized that Applicant’s amendments have been considered in the interest of customer service and compact prosecution. However, for the response to this Office Action to be complete, Applicant is REQUIRED to file amendments that are compliant with 37 CFR 1.121. Failure to comply with this requirement will be considered nonresponsive.
Claims 23 and 77-95 are under prosecution.
Notice to Comply with Requirements for Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence Disclosure.
5. This application contains sequence disclosures that are encompassed by the definitions for nucleotide and/or amino acid sequences set forth in 37 CFR 1.821(a)(1) and (a)(2). However, this application fails to comply with the requirements of 37 CFR 1.821 through 1.825 for the reason(s) set forth below.
Specifically, the application fails to comply with CFR 1.821(d), which states:
(d) Where the description or claims of a patent application discuss a sequence that is set forth in the “Sequence Listing” in accordance with paragraph (c) of this section, reference must be made to the sequence by use of the sequence identifier, preceded by “SEQ ID NO:” in the text of the description or claims, even if the sequence is also embedded in the text of the description or claims of the patent application.
6. Figure 1 discloses nucleotide sequences. However, none of the sequences are identified by a SEQ ID NO.
For compliance with sequence rules, it is necessary to include the sequence in the “Sequence Listing” and identify them with SEQ ID NO. In general, any sequence that is disclosed and/or claimed as a string of particular bases or amino acids, and that otherwise meets the criteria of CFR 1.821(a), must be set forth in the “Sequence Listing.” See MPEP 2422.03.
7. While the Examiner has made every attempt to check the Specification for sequence compliance, Applicant is required to carefully check the entire Specification for any and all issues regarding sequence compliance.
8. For the response to this Office Action to be complete, Applicant is REQUIRED to comply with the Requirements for Patent Applications Containing Nucleotide Sequence And/Or Amino Acid Sequence Disclosures. Failure to comply with the Requirements will be considered nonresponsive.
Information Disclosure Statement
9. The Information Disclosure Statements filed 14 February 2023 and 2 June 2024 are acknowledged and have been considered.
It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Claim Objections
10. Claims 23 and 77 are objected to because of the following informalities:
A. Claim 23 contains the phrase “wherein nucleic acid probe comprises,” which appears to be a typographical error.
B. Claim 77 is objected to because it does not end with a period.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
11. 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.
12. Claims 23 and 77-95 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.
A. Claims 23 and 77-95 are indefinite the multiple recitations of numbers within parenthesis, as it is unclear what the numbers refer to.
B. The term “polar” in claim 23 (upon which claims 77-95 depend) is a relative term which renders the claim indefinite. The term “polar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
C. Claim 78 is indefinite in the recitation “the spacer,” which lacks antecedent basis because claim 23 does not recite a spacer.
Claim Rejections - 35 USC § 103
13. 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.
14. 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.
15. Claims 23, 82-84, 86-89, and 92-95 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002).
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.
Regarding claim 23, 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), 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 the nucleic acids are single stranded (paragraph 0014), and that nucleic acids hybridize to one another (and thus have complementary sequences; paragraph 0010), Schwartz et al. do not teach the nucleic acids detect an RNA sequence or the detection of pathogenic virus.
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 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 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) and allowing selective recognition of a target species as explicitly taught by Abbott et al. (Abstract). 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 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 86, the chip of claim 23 is discussed above. Schwartz et al. teach the cationic surfactant OTAB at 100 mM (paragraph 0075). which is 0.1 mM.
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).
It is also noted 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.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II.
Therefore, the claimed range merely represents 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.
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.
Regarding claim 88, the chip of claim 23 is discussed above.
It is noted that Figure 7B of the instant specification shows that concentrations of the surfactant DTAB result in the instantly claimed surface coverage.
The courts have stated:
similar properties may normally be presumed when compounds are
very close in structure. Dillon, 919 F.2d at 693, 696, 16 USPQ2d at 1901, 1904. See also In re Grabiak, 769 F.2d 729, 731, 226 USPQ 870, 871 (Fed. Cir. 1985) (“When chemical compounds have very close’ structural similarities and similar utilities, without more a prima facie case may be made.”). Thus, evidence of similar properties or evidence of any useful properties disclosed in the prior art that would be expected to be shared by the claimed invention weighs in favor of a conclusion that the claimed invention would have been obvious. Dillon, 919 F.2d at 697-98, 16 USPQ2d at 1905; In re Wilder, 563 F.2d 457, 461, 195 USPQ 426, 430 (CCPA 1977); In re Linter, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972) (see MPEP 2144.08(d)).
The courts have also stated:
[c]ompounds which are position isomers (compounds having the same radicals in physically different positions on the same nucleus) or homologs (compounds differing regularly by the successive addition of the same chemical group, e.g., by -CH2- groups) are generally of sufficiently close structural similarity that there is a presumed expectation that such compounds possess similar properties. In re Wilder, 563 F.2d 457, 195 USPQ 426 (CCPA 1977). See also In re May, 574 F.2d 1082, 197 USPQ 601 (CCPA 1978) (stereoisomers prima facie obvious) (see MPEP 2144.09).
Schwartz et al. teach both DTAB (i.e., dodecyltrimethylammonium bromide) and OTAB (i.e., octadecyltrimethylammonium bromide; paragraph 0052), and the use of OTAB at 100 mM (paragraph 0075). which is 0.1 mM. Thus, because OTAB is a homolog of DTAB, it is expected to have the same properties.
Alternatively, it would have been obvious to use the same concentration of DTAB that was used for OTAB, thereby resulting in the clamed surface coverage.
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.
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).
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.
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).
16. Claims 77-79 and 90 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002) as applied to claim 23 above, and further in combination with Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003).
Regarding claims 77-79 and 90, the chip of claim 23 is discussed above in Section 15.
While Schwartz et al. teach a plurality of detection areas, in the form of array compartments; paragraph 0063), none of the previously cited prior art teaches the claimed spacer (i.e., claims 77-79) or cover (i.e., claim 79).
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 (i.e., claim 77; Figures 4-5 and paragraphs 0052-0056). The spacer does not cover the reaction regions (i.e., the detection regions of claim 78; Figures 4-5). Schleifer further teaches single gaskets with multiple openings (paragraph 0054), and that a cover 42 disposed on spacer 34 (i.e., claim 79; 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 from the array of reaction regions (i.e., the claimed detection regions) forms a grid, which can be used to assay different specimens (i.e., claim 90). 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.
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 Schleifer 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 forming a fluid tight seal to contain a sample during a binding reaction as explicitly taught by Schleifer (paragraph 0011). In addition, it would have been obvious to the ordinary artisan that the known techniques of Schleifer could have been combined with the cited prior art with predictable results because the known techniques of the Schleifer predictably result in chips useful for detection of biological molecules.
17. Claims 80-81 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002) as applied to claim 23 above, and further in combination with Ong (U.S. Patent Application Publication No. US 2007/0202253 A1, published 30 August 2007) and Schleifer (U.S. Patent Application Publication No. US 2003/0231985 A1, published 18 December 2003).
Regarding claims 80-81, the chip of claim 23 is discussed above in Section 15.
While Schwartz et al. and Abbott et al. teach polarizers (paragraphs 0059 and 0111, respectively), 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 (i.e., claim 80), 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.
None of the previously cited prior art teaches the cover is transparent.
However, Schleifer teaches an array of detection regions, in the form of reaction areas 60 on substrate 30, having a cover 42 disposed on spacer 34 (i.e., claim 79; Figure 2A and paragraph 0035). Schleifer also teaches the cover is transparent (paragraph 0051), and that the device has the added advantage of allowing ready interrogation of the array (paragraph 0051). Thus, Schleifer teaches the known techniques discussed above.
It is reiterated that 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.
Thus, any arrangement of the polarizers is an obvious variant of the teachings of the cited prior art.
Applicant is again cautioned to avoid merely relying upon counsel’s arguments in place of evidence in the record.
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 Ong and Schleifer 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 advantages of preventing light from a light source from passing through the device as explicitly taught by Ong (paragraph 0008) and allowing ready interrogation of the array as explicitly taught by Schleifer (paragraph 0051). In addition, it would have been obvious to the ordinary artisan that the known techniques of Ong and Schleifer could have been combined with the cited prior art with predictable results because the known techniques of the Ong and Schleifer predictably result in chips useful for light-based detection.
18. 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002) 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 15.
While Abbott et al. teach 5CB (paragraph 0080), and while Schwartz et al. teach mixtures including 5CB and 5CT (paragraph 0057), neither reference 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.
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.
19. 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002) 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 15.
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.
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.
20. Claims 90-91 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) and Abbott et al. (U.S. Patent Application Publication No. US 2002/0055093 A1, published 9 May 2002) as applied to claim 23 above, and further in combination with Zhou et al. (Nanomaterials, vol. 6, pages 1-9, published 1 December 2016).
It is noted that while claim 90 has been rejected as described above, the claim is also obvious using the interpretation outlined below.
Regarding claims 90-91, the chip of claim 23 is discussed above in Section 15.
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 (i.e., claim 91) and which utilize specimen grids (i.e., claim 90; 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.
Conclusion
21. No claim is allowed.
22. 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.
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Robert T. Crow
Primary Examiner
Art Unit 1683
/Robert T. Crow/Primary Examiner, Art Unit 1683