Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Receipt is acknowledged of Applicant’s Amendment filed on 04/01/2026.
Claims 24, 38-43, 45 have been amended.
Claims 25, 37, 44, 46, 48, 50 have been canceled
Claims 24, 26-28, 30-32, 38-43, 45, 83 are pending in the instant application.
Note, rejections and objections not reiterated from previous office actions are hereby withdrawn. The following rejections or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Double Patenting
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.
Claims 24, 26-28, 30-32, 38-43, 45, 83 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 11,534,504 in view of NGUYEN et al (The development of paper discs immobilized with luciferase/D-luciferin for the detection of ATP from airborne bacteria. Sensors and Actuators B 260 (2018) 274–281) and AI et (US 2018/0057801).
The patent recites a composition comprising: a compound selected from coelenterazine-h, coelenterazine-h-h, furimazine, JRW-0238, JRW-1743, and JRW-1744; and pullulan; wherein the composition is in the form of a lyophilized powder or cake (see claim 1), wherein the pullulan polymer was elected in the parent Applicant and is recited in claims 27 and 30 in the instant application. The composition further comprises a buffer selected from a phosphate buffer (see claim 3).
The patent does not recite placing the composition on paper product.
NGUYEN teaches a composition comprised of: luciferin (see title), which are bioluminescence (see pg. 276, under 2.5), immobilized on paper discs (see title). The luciferin is sensitive to ATP and can be used as a fast and sensitive sensor to detect airborne bacteria (see abstract), wherein luciferin emits a yellow-green light (see g. 275, 1st col). Additional closures include: luciferin utilized luciferase as the catalyst (see title and pg. 275, 1st col); cellulose filter paper was cut into small disc-shapes (see pg. 275, under 2.1); reconstituting luciferin with dilution buffer (see pg. 275, under 2.1 and 2.4).
AI teaches the prior art had known of luciferins, such as coelenterazine and furimazine (see [0047]).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate reconstitute the coelenterazine or furimazine and placed on paper. The person of ordinary skill in the art would have been motivated to make those modifications, because it could be used as a fast and sensitive sensor to detect airborne bacteria, and reasonably would have expected success because the prior art had known of reconstituting lyophilized powder and place the solution on a paper.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 24, 26, 38 and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over NGUYEN et al (The development of paper discs immobilized with luciferase/D-luciferin for the detection of ATP from airborne bacteria. Sensors and Actuators B 260 (2018) 274–281) in view of AI et (US 2018/0057801) and HALVERSON et al (US 2007/0021603).
Regarding claims 24, 26 and 38, NGUYEN teaches a composition comprised of: luciferin (see title), which are bioluminescence (see pg. 276, under 2.5), immobilized on paper discs (see title). The luciferin is sensitive to ATP and can be used as a fast and sensitive sensor to detect airborne bacteria (see abstract), wherein luciferin emits a yellow-green light (see g. 275, 1st col). Additional closures include: luciferin utilized luciferase as the catalyst (see title and pg. 275, 1st col); cellulose filter paper was cut into small disc-shapes (see pg. 275, under 2.1); reconstituting luciferin with dilution buffer (see pg. 275, under 2.1 and 2.4).
NGUYEN does not teach using a specific type of bioluminescence, such coelenterazine or furimazine; or that the dilution buffer is phosphate buffer.
AI teaches the prior art had known of luciferins, such as coelenterazine and furimazine (see [0047]).
HALVERSON teaches the prior art had known of using phosphate buffer as a dilution buffer (see [0094]).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate a specific type of bioluminescence, such coelenterazine or furimazine. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because coelenterazine, furimazine and luciferin are functional equivalents of bioluminescence well-known in the art.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate using phosphate buffer as a dilution buffer. The person of ordinary skill in the art would have been motivated to make those modifications and reasonably would have expected success because phosphate dilution buffers are well-known in the art.
Regarding claim 45, NGUYEN teaches cellulose filter paper (see pg. 275, at 2.1).
Claim(s) 24, 26, 38-43 and 45, 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over NGUYEN et al (The development of paper discs immobilized with luciferase/D-luciferin for the detection of ATP from airborne bacteria. Sensors and Actuators B 260 (2018) 274–281) in view of AI (US 2018/0057801), HALVERDON et al (US 2007/0021603), LEU et al (US 2010/0092967), DRAGAVON et al (US 2017/0108442), BRYAN et al (US 2015/0225642) and LASMEZAS (US 2014/0039156).
As discussed above, the references teach Applicant’s invention.
The references do not teach thiourea or polysorbate 20 or sodium chloride or ascorbic acid or citric acid; or one or more containers in the kit.
LEU teaches the prior art had known that in the presence of a reducing agents, such as thiourea (see [0145]), very high bioluminescent signal strength generated from a naturally secreted luciferase in the first few seconds following addition of substrate can be coupled with a very rapid decline in bioluminescent signal (see [0140]).
DRAGAVON teaches the prior art had known that detergents, such as Tween 20, which is polysorbate 20, increases the luminescent signal of luciferin (see [0036]), such as coelenterazine (see [0030]).
BRYAN teaches the prior art had known of coelenterazine stabilizers, such as ascorbic acid (see [0063]), and enzymatic activity modulators, such as sodium chloride and citric acid (see [0063]); and combining coelenterazine with luciferases (see [0063]).
LASMEZAS et al teaches the prior art had known of using box containers in kits (see [0038]), wherein kit refers to any delivery system for delivering materials from one location to another (see [0038]).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate thiourea or polysorbate 20. The person of ordinary skill in the art would have been motivated to make those modifications, because they would allow adjustment of the illumination intensity, and reasonably would have expected success because the references dealt with the same field on endeavor, such as luciferins and luciferase.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate sodium chloride, citric acid and ascorbic acid. The person of ordinary skill in the art would have been motivated to make those modifications, because they would allow stabilization of the coelenterazine and modulate the enzyme activity, and reasonably would have expected success because the references dealt with the same field on endeavor, such as luciferins and luciferase.
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate one or more containers in the kit. The person of ordinary skill in the art would have been motivated to make those modifications, because for delivering materials from one location to another, and reasonably would have expected success because this is a well-known practice to deliver goods.
Claim(s) 24, 27-28, 31-32, 38, 41-43, 45, 83 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRYAN et al (US 2015/0225642) in view of HOGUE et al (US 2005/0158794).
BRYAN teaches a composition for entertainment (see abstract) comprised of: self-illuminating protein (see abstract) luciferins (see [0005]), such as coelenterazine (see title), by producing visible light chemically stored within a protein dissolved in water designed to emit visible or ultraviolet light that would visually enhance (surprise, startle, dazzle, amaze, scare or otherwise entertain) the audience experience during a theatrical, cinematic, stage, or music performance created by the direct application to the audience via their clothes, hair, and the chairs, flooring materials, upholstery, and any adjacent surfaces containing calcium on that surface (see [0002]). Additional disclosures include: pullulan, cellulose, hydroxypropyl-beta cyclodextrin, phosphate buffering, sodium chloride, ascorbic acid, and citric acid (see [0063]); and utilizing luciferase (see [0058]); bioluminescent (see [0109]); and kit (see [0154]).
BRYAN teaches the bioluminescent can be on chairs, flooring materials, upholstery, but does NOT explicitly teach using the bioluminescent on paper product.
HOGUE teaches the prior art had known of using bioluminescence for entertainment (see [0120]), such as placing on toys; finger paints and other paints; textiles; figurines; personal items, such as body lotions, gels, powders and creams, nail polishes, cosmetics including make-up, and paper (see [0120]).
It would have been obvious to the person of ordinary skill in the art at the time the invention was made to incorporate BRYAN’s self-illuminating coelenterazine on paper product. The person of ordinary skill in the art would have been motivated to make those modifications, because it would provide illuminating entertainment, such as on illuminating paper playing cards, illuminating confetti papers, etc. and reasonably would have expected success because both references dealt in the same field of endeavor, such as bioluminescence for entertainment.
Allowable Subject Matter
Claim 30 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims; and the filing of a Terminal Disclaimer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Telephonic Inquiries
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKE MINH VU whose telephone number is (571)272-8148. The examiner can normally be reached Mon-Fri 9:00am-5:30pm.
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/JAKE M VU/Primary Examiner, Art Unit 1618
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