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 12 August 2026 in which claims were amended, claim 2 was canceled, and no new claims were added. All of the amendments have been thoroughly reviewed and entered.
3. Any previous rejections not reiterated below are withdrawn in view of the amendments.
Applicant’s arguments have been thoroughly reviewed and are addressed following the rejections necessitated by the amendments.
4. Claims 1 and 3-11 are under prosecution.
5. This Office Action includes new rejections necessitated by the amendments.
Claim Interpretation
6. The claims are subject to the following interpretation:
A. Regarding claims 1 and 3-11, the courts have stated:
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP§ 2113.
Thus, any imitations that are part of the process of making the claimed chip rather than structural limitations of the claimed chip are not further limiting. Any art that teaches the structural elements of the claims therefore anticipates, or renders obvious, the claimed chip.
B. It is noted that any optional limitations, such as those found in claims 4, 6, 9and 10, are not actually required by the claims, and thus do not further limit them.
It is also suggested that the optional limitations in each of claims 4, 6, 9, and 10 be preceded by the word “and.”
Claim Rejections - 35 USC § 112
7. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
8. Claims 1 and 3-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This is a new matter rejection necessitated by the amendments.
Claim 1 (upon which claims 3-6 and 10-11 depend), claim 7 (upon which claim 9 depends) and claim 8 each recite “a cutting piece.” A review of the specification yields no recitation of a “cutting piece.” Thus, the amendments constitute new matter.
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. Claims 7-9 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. Claim 7 (upon which claim 9 depends) and claim 8 are each indefinite in the recitation “preferable,” as it is unclear of the “preferable” limitations are actually required by the claims.
B. Claim 8 is indefinite in the recitation “the wafer is a silicon wafer,…; the wafer is a quartz wafer…,” as it is unclear how the wafer can be both.
For the purposes of examination, the claim is interpreted as having either a silicon wafer or a quartz wafer.
C. Claim 9 is indefinite in the recitation “the transition metal oxide layer at recessed portion of the plurality of wells of the second silicon oxide layer,” which lacks antecedent basis.
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 1, 5-6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002).
Regarding claims 1 and 5, Li et al. teach a sequencing chip (i.e., flow cell; Abstract). comprising a chip main body, in the form of a composite wafer structure (paragraph 0018) comprising at least one chip particle in the same layer, in the form of particles (i.e., pieces) of the chip that are separated by cutting along scribe lines to form multiple dies (paragraph 0137). Li et al. also teach the wafer layer has a dielectric layer 121, wherein the dielectric layer is silicon dioxide (paragraph 0130) and is covered with a metal oxide layer 123 (Figure 2 and paragraph 0129), in the form of titanium dioxide (paragraph 0190). First surface layer 161 is on the transition metal oxide layer (paragraph 0139 and Figure 7), wherein biological sample 171 is bonded to the first surface layer 161 (paragraph 0146). The biological sample is a DNA molecule (paragraph 0150), and the metal oxide surface is treated with polyvinylphosphonic acid (paragraph 0191). Li et al. also teach the polymer is a phosphate of a phosphonic acid (paragraph 0218). Thus, it would have been obvious to have a phosphate of polyvinylphosphonic acid.
While Li et al. do not specifically teach the uniform arrangement of the cutting lines along a matrix, 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.
It is also noted that the courts have 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. Thus, the claimed placement of the cutting lines merely represents an obvious rearrangement and/or routine optimization of the placement of the cutting lines of the cited prior art.
The courts have also stated
even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP§ 2113.
The limitations regarding “cut along cutting lines of a waver layer” are part of the process of making the chip rather than structural limitations of the chip. Because the cited prior art teaches the structural elements of the claim, the claim is obvious.
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.
Li et al. also teach the devices have the added advantage of improved fabrication (paragraph 0006). Thus, Li et al. teach the known techniques discussed above.
Li et al. teach the silicon oxide layer (i.e., first passivation layer; paragraph 0125) is less than 100 nm (paragraph 0240), which encompasses the values of claims 1 and 5, as well as the metal oxide regions (i.e., spots 223) being separate from one another (Figure 8 and paragraph 0162).
Li et al. do not teach the claimed thicknesses of the transition metal oxide layers.
However, Vinet et al. teach biochips for sequencing (paragraph 0002) comprising immobilized oligonucleotides on a silicon support having a silicon oxide layer thereon (paragraph 0008), and which has a further layer of titanium dioxide having a thickness of a few nanometers up to 1 micron (paragraph 0027), Vinet et al. also teach the device has the added advantage of allowing a greater probed density (paragraph 0008). Thus, Vinet 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).
It is also reiterated that 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 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.
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 Li et al. and Vinet et al. 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 improved fabrication as explicitly taught by Li et al. (paragraph 0006) and allowing a greater probe density as explicitly taught by Vinet et al. (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 structures useful for nucleic acid sequencing.
Regarding claim 6, the chip of claim 5 is discussed above. Li et al. teach first surface layer 161, which is on the transition metal oxide layer, further comprises second surface layer 162, which comprises amine groups (paragraph 0142).
Regarding claim 11, the chip of claim 1 is discussed above. Li et al. also teach the wafer is a CMOS wafer (paragraph 0118) and the transition metal oxide is titanium dioxide (paragraph 0190).
14. Claims 1, 5-6, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) based on the citations provided above.
15. Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 1 above, and further in combination with Gray et al. (U.S. Patent Application Publication No. US 2014/0175052 A1, published 26 June 2014).
Regarding claims 3-4, the chip of claim 1 is discussed above in Section 13.
Li et al. also teach the devices have the added advantage of improved fabrication (paragraph 0006). Thus, Li et al. teach the known techniques discussed above.
While Li et al. teach waveguides (paragraph 0251), the cited prior art does not teach the size of the polyvinylphosphonate.
However, Gray et al. teach waveguides (Title and Abstract) for use in sequencing (paragraph 0173), wherein the waveguides are on wafers that are diced (paragraph 0129) and that have cationic transition metals (e.g., of titanium) having polyvinylphosphonic acid (i.e., PVPA) coatings (paragraph 0142), wherein the PVPA has the claimed structure with n=10 (i.e., claim 3; paragraph 0159-0160). Gray et al. also teach the PFPA forms strong bonds to metal oxide surfaces (i.e., claim 4; paragraph 0156) and that the PVPA has the added advantage of forming a smooth oxidation layer as required for use as a zero mode waveguide (paragraph 0152). Thus, Gray 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 Gray 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 forming a smooth oxidation layer as required for use as a zero mode waveguide as explicitly taught by Gray et al. (paragraph 0152). In addition, it would have been obvious to the ordinary artisan that the known techniques of the Gray et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Gray et al. predictably result in structures useful for nucleic acid sequencing.
16. Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 1 above, and further in combination with Gray et al. (U.S. Patent Application Publication No. US 2014/0175052 A1, published 26 June 2014) based on the citations discussed above.
17. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 6 above, and further in combination with Gertler et al. (Langmuir, vol. 26, pages 6457-6463, published online 30 March 2010).
Regarding claim 10, the chip of claim 6 is discussed above in Section 13.
The previously cited prior art does not teach binding of amines to the transition metal layer.
However, Gertler et al. teach the binding of amine groups to titanium dioxide, and that the interaction allows conditions resembling biologically relevant environments (Abstract). Thus, Gertler et al. each 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 Gertler et al. with Li et al. and Vinet et al. 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 allowing conditions resembling biologically relevant environments as explicitly taught by Gertler et al. (Abstract ). In addition, it would have been obvious to the ordinary artisan that the known techniques of the Gertler et al. could have been combined with the cited prior art with predictable results because the known techniques of Gertler et al. predictably result in useful linkers for binding biological molecules to titanium dioxide.
18. Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 6 above, and further in combination with Gertler et al. (Langmuir, vol. 26, pages 6457-6463, published online 30 March 2010) based on the citations discussed above.
Double Patenting
19. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
20. Claims 1, 5-6, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) based on the citations and rationale discussed above.
Both sets of claims are drawn to wafers, chips, chip matrices, cutting lines, phosphonic acids, silicon oxide layers, transition metal oxide layers, thicknesses, etc.
Any additional limitations of the ‘721 claims are encompassed by the open claim language “comprising” found in the instant claims.
The ‘721 claims do not require nucleic acids.
However, Li et al. teach and Vinet et al. teach the missing limitations, as well as the additional claimed limitations and the rationale for combining as discussed above.
21. Claims 1, 5-6, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) based on the citations and rationale discussed above.
22. Claims 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 1 above, and further in combination with Gray et al. (U.S. Patent Application Publication No. US 2014/0175052 A1, published 26 June 2014) based on the citations and rationale discussed above.
23. Claims 3-4 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) based on the citations and rationale discussed above as applied to claim 1 above, and further in combination with Gray et al. (U.S. Patent Application Publication No. US 2014/0175052 A1, published 26 June 2014) based on the citations and rationale discussed above.
24. Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (Taiwanese Patent Application Publication No. TW 201717218, published 1 May 2019; citations are to U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019, which is an English language equivalent of the Taiwanese Publication) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 6 above, and further in combination with Gertler et al. (Langmuir, vol. 26, pages 6457-6463, published online 30 March 2010) based on the citations and rationale discussed above.
25. Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 12,538,721 B2 in view of Li et al. (U.S. Patent Application Publication No. US 2019/0088463 A1, published 21 March 2019) and Vinet et al. (U.S. Patent Application Publication No. US 2002/0076561 A1, published 20 June 2002) as applied to claim 6 above, and further in combination with Gertler et al. (Langmuir, vol. 26, pages 6457-6463, published online 30 March 2010) based on the citations and rationale discussed above.
Allowable Subject Matter
26. The following is a statement of reasons for the indication of allowable subject matter:
Independent claim 7 (upon which claim 9 depends) and independent claim 8 each require the second silicon oxide layer to form a plurality of wells that are connected to each other on the upper surface of the transition metal oxide layer and a lower surface of the phosphonic acid polymer film. While Li et al. show second surface layer 362 coats the wells and touches the upper surface of the continuous transition metal oxide 323 (Figure 19 and paragraphs 0170 and 0174) or the spotted transition metal oxide 423 (Figure 25), Li et al do not teach the silicon oxide layers wells are also connected via a lower surface of the phosphonic acid polymer film, as the cited Figures only show the wells touching the sides of the polymer film, and not the lower surface.
Response to Arguments
27. Applicant's arguments filed 12 August 2026 (hereafter the “Remarks”) have been fully considered but they are not persuasive for the reasons discussed below.
A. Applicant’s arguments on pages 11-16 of the Remarks refer to the amendments and rejections that are withdraw in in view of the amendments.
However, as noted in the rejection above, Applicant has again included claim limitations described as “preferable,” which is indefinite as noted in the previous Office Action.
B. Applicant also argues on 13-16 that Li et al. fail to teach the claimed thicknesses, and appears to argue unexpected results (e.g., enhanced stability and signal strand of DNA nanoballs).
While the rejection above are new rejections necessitated by the amendments, the rejections do note that Li et al. do teach some of the claimed thicknesses, as well as the obviousness of similar ranges and routine optimization.
With respect to the alleged unexpected results, the fact that the Inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., DNA nanoballs) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, it is noted that claim 1 is not limited to a silicon or quartz wafer, and that any results arising from a quartz wafer are moot as independent claims 7 and 8 are not limited to a quartz wafer.
C. Applicant’s arguments on page 17 of the Remarks rely on the alleged deficiencies discussed above, and present no further arguments.
D. Applicant’s arguments on pages 18-24 of the Remarks rely on the alleged deficiencies discussed above, and present no further arguments.
It is noted, however, that independent claims 7 (upon which claim 9 depends) and independent claim 8 contain allowable subject matter, and are not rejected as obvious or under non-statutory double patenting.
Conclusion
28. No claim is allowed.
29. 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).
30. 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.
31. 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
Prosecution Insights