DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
1- This office action is a response to an application filed on 5/09/2023, in which claims 17-36 are currently pending. The Application is a National Stage entry of PCT/US2021/058625 , International Filing Date: 11/09/2021. PCT/US2021/058625 Claims Priority from Provisional Application 63111955 , filed 11/10/2020.
Election/Restrictions
2- In their latest response on 3/24/2026, the Applicants elected without traverse to prosecute the invention of et al., group III, claims 17-20.
Claims 1-16 are withdrawn, and cancelled, from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions.
Information Disclosure Statement
3- The submitted information disclosure statement(s) (IDS) is(are) in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) is(are) being considered by the examiner.
Specification
4- The specification has not been checked to the extent necessary to determine the presence of all possible minor errors, even though many typos were encountered. Applicant’s cooperation is requested in correcting any errors of which application may become aware in the specification.
Drawings
5- The drawings were received on 5/9/2023. These drawings are objected to for the minor typographical error in Fig. 1B where the legend “UV-PENTRABLE …” needs to be corrected into “UV-PENETRABLE…”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
6- 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.
7- Claim 33 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 pre-AIA the applicant regards as the invention.
As to claim 33, which reads “wherein the second material and the third material are in a different ratio”, the underlined clauses appear to present indefiniteness issues as it is not clear to which parameter(s) the ratio refers to. It is an amount ratio? A spectral response ratio? An absorption coefficient ratio?
For examination purposes, all these options will be considered.
Claim Rejections - 35 USC § 102
8- 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 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 (MPEP 706.02(m)).
9- The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
In addition, the functional recitation in the claims (e.g. "configured to" or "adapted to" or the like) that does not limit a claim limitation to a particular structure does not limit the scope of the claim. It has been held that the recitation that an element is "adapted to", "configured to", "designed to", or "operable to" perform a function is not a positive limitation but only requires the ability to so perform and may not constitute a limitation in a patentable sense. In re Hutchinson, 69 USPQ 139. (See MPEP 2111.04); see also In In re Giannelli, 739 F.3d 1375, 1378, 109 USPQ2d 1333, 1336 (Fed. Cir. 2014).
Also, it should be noted that it has been held that a recitation with respect to the manner in which a claimed device is intended to be employed does not differentiate the claimed device from a prior art apparatus satisfying the claimed structural limitations Ex-parte Masham 2 USPQ2d 1647 1987).
The claimed system in the instant application is capable of performing the claimed functionality, as is the prior art used in the present office action. The Examiner notes that where the patent office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on. In re Swinehart and sfiligoj, 169 USPQ 226 (C.C.P.A. 1971).
10- Claims 17-18, 21-22, 24, 26, 30-36 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Liotta et al. (PGPUB No. 2002/0037269)
As to claims 17, 30, Liotta teaches a system (Abstract, Figs. 1-10) comprising a capture element (31/32 or 54 with its two layers) comprising a transmissive film (¶ 71-79, 81, 86-87 for ex; backing layer 31 or non-adhesive top support film of 54) and a transfer film (¶ 71-79, 81, 86-87 for ex; adhesive layer 32 or adhesive bottom layer of 54), wherein the transmissive film comprising a first material configured to transmit a first ray comprising a first wavelength of about 300 nm to about 1100 nm (¶ 71, 81, 85; glass or equivalent that are transparent in the visible spectrum), and the transfer film comprising a second material configured to absorb a first second ray comprising of a second wavelength of about 200 nm to 400 nm; wherein the second material comprises an absorptive material; (claim 30) wherein the second wavelength is in a range of about 280 nm to about 380 nm (¶ 86 for ex; ultraviolet sensitive or curing adhesives such as ThorLabs, Inc’s N060-NOA81, which absorb in the 200 to 350 nm -see attached evidence in the Conclusion hereunder, and which overlaps with the claimed range) and wherein the system is configured to examine a sample placed on a stage of the system (sample 33 or 50 on slide-on-stage 34 or 52, respectively).
(claims 18/33) wherein the transfer film further comprises a third material configured to absorb a third ray with a third wavelength of about 700 nm to 1100 nm (¶ 73, 87, 98 for ex. 691-1300 nm absorption range overlaps and reads onto the claimed third wavelength); (claim 33) wherein the second material and the third material are in a different ratio (given the 112 issue, and given the different considered absorption wavelengths, a ratio between the central wavelength and its corresponding range is necessarily different between the two materials).
(claims 21-22, 26) wherein the absorptive material comprises a dye; (claim 22) wherein the dye is configured to transmit a fourth ray having a fourth wavelength of about 380 nm to about 700 nm; (claim 26) wherein the dye comprises a broad band absorptive dye or a frequency specific absorptive dye (¶ 85, 88-89, 94).
(claim 24) wherein the transfer film comprises a micropattern (¶ 106-107, 110, 112; patterns are formed and/or considered).
(claims 31-32) wherein the system further comprises a source of radiation; wherein the source of radiation comprises a laser beam(Fig. 9, ¶ 81-84, 88; laser 58/70 and its opto-electronics).
(claims 34-35) wherein activation of the sample allows dissociation of a label from a molecular probe present on the surface of the sample; (claim 35) wherein the label is connected to the molecular probe via a photocleavable linker (¶ 39, 42, 60, 76, 127, 153-154; claims 5-6 for ex.)
(claim 36) wherein the label comprises a UV-labile labeling element (¶ 71, 86, claims 5-6)
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 of this title, 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
12- Claims 19-20, 23, 25, 27-29 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Liotta
As to claims 19/28, 25, Liotta teaches the system of claim 17, wherein the stage is configured to place the sample on a slide (34 or 52) comprising the sample (33 or 50).
Liotta does not teach expressly wherein the slide comprises a conductive substrate configured to activate the sample in subjection of the second ray and (claim 28) wherein the slide comprises a third absorptive material, which is not claimed as different than the material of the conductive substrate, configured to absorb the second ray; (claim 25) wherein the slide comprises a second absorptive material configured to absorb an infrared radiation (IR) radiation of about 700 to about 1100 nm; .
However, one PHOSITA would consider Liotta’s teachings about using the second ray activatable and IR absorbing layers 32/54 to duplicate the coating on the slide to selectively attach the sample on areas of interest (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the system of Liotta in view of general suggestions in the reference so that the slide comprises a conductive substrate configured to activate the sample in subjection of the second ray; wherein the slide comprises a third absorptive material configured to absorb the second ray; wherein the slide comprises a second absorptive material configured to absorb an infrared radiation (IR) radiation of about 700 to about 1100 nm, with the advantage of effectively optimizing the adherence of the sample to the slide during the illumination process.
As to claim 20, Liotta teaches the system of claim 17.
Liotta does not teach expressly wherein the absorptive material comprises a benzophenone dye, a benzotriazole dye, octrizole, a triazine dye or a combination thereof.
However, one PHOSITA would consider Liotta’s teachings, ¶ 86, 88 for ex., to use materials/dyes such as phenolic and/or ketone based resins which includes the species benzophenone to optimize the absorption of the used material (See MPEP § 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the system of Liotta in view of general suggestions in the reference so that the absorptive material comprises a benzophenone dye, a benzotriazole dye, octrizole, a triazine dye or a combination thereof, with the advantage of effectively optimizing the absorption of the used material.
As to claim 23, Liotta teaches the system of claim 21.
Liotta does not teach expressly wherein the transfer film has the dye in an amount ranging about 1 mM to about 0.1 mM.
However, Liotta teaches a wide range of densities of the materials/gels used as an absorptive material (¶ 86), which would suggest to one PHOSITA to use the particular claimed range for the dye density with the advantage of optimally adapting the density to the expected absorption of the ray intensity/power (see MPEP 2143 Sect. I. B-D).
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the system of Liotta in view of general suggestions in the reference so that the transfer film has the dye in an amount ranging about 1 mM to about 0.1 mM, with the advantage of optimally adapting the density to the expected absorption of the ray intensity/power.
As to claims 27, 29, Liotta teaches the system of claim 21.
Liotta does not teach expressly wherein the dye is configured to transmit about 80% of the fourth ray and absorb about 80% of the second ray; (claim 29) wherein the dye has a molecule with size less than 1000 kDa.
However, given Liotta’s teachings, and the references incorporated therein (see for ex. the absorption/transmission of one of those used materials), one PHOSITA would find it obvious to arbitrarily chose specific values of transmission and/or absorption of the material used that read on the claimed values to effectively optimize the adherence of the sample on selected zones of the layers (See MPEP 2143 Sect. I. A-D). Moreover, since it is obvious to use benzophenone as the dye material (See rejection of claim 20), and since benzophenone is known to have a molecular weight of about 0.182 kDA, Liotta suggests the dye molecule with size less than 1000 kDA.
Therefore, it would have been obvious to one with ordinary skills in the art before the effective filing date of the instant application to use the system of Liotta in view of general suggestions in the reference so that the dye is configured to transmit about 80% of the fourth ray and absorb about 80% of the second ray; wherein the dye has a molecule with size less than 1000 kDa, with the advantage of effectively optimize the adherence of the sample on selected zones of the layers.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure:
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The examiner has pointed out particular references contained in the prior art of record in the body of this action for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. Applicant should consider the entire prior art as applicable as to the limitations of the claims. It is respectfully requested from the applicant, in preparing the response, to consider fully the entire references as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED K AMARA whose telephone number is (571)272-7847. The examiner can normally be reached on Monday-Friday: 9:00-17:00
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached on (571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohamed K AMARA/
Primary Examiner, Art Unit 2877
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