DETAILED ACTION
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 .
Election/Restrictions
Applicant(s) elected Claims 1-19, Group I, in response to the Election/Restriction submitted 09/04/2025, as the elected subject matter. Claims 10-16, Group II, and claims 17-20, Group III are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The election was made without traverse in the reply filed on 11/03/2025.
Status of Claims
Claim 1-20 are pending with claims 1-9 under examination and claims 10-20 withdrawn from consideration.
Information Disclosure Statement
The information disclosure statement (IDS) document(s) submitted on 08/08/2024, 10/10/2024, and 09/04/2025 are compliant with the provisions of 37 CFR 1.97. Accordingly, the IDS document(s) has/have been fully considered by the examiner.
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9 recites “tungsen (W)” which appears to be a grammatical/clerical mistake and should recite “tungsten (W)”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 3 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.
Claim 3 recites “the nanostructure layer has a uniform thickness”. However, claim 1 lines 6-7 previously recite “the nanostructure layer … comprising a plurality of nanofeatures having non-uniform sizes and/or non-uniform shapes”. This is ambiguous in that claim 1 requires the nanostructure layer be uniform in thickness and then recites that the nonfeatures on the nanostructure layer are non-uniform in size. It is unclear how the thickness of the nanostructure layer can be uniform if nanofeatures of the nanostructure layer are non-uniform in size.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2 and 4-9 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Lee et al. (US 2018/0080064 – hereinafter “Lee”).
Regarding claim 1, Lee disclose an assay repository device for photothermal or joule heating (Lee disclose a photonic PCR system combining the use of thin Au film as a light-to-heat converter and a light source such as light-emitting diodes (LEDs) as heat source; figs. 103, [0041-0056]), the assay repository device comprising:
an assay container (Lee; transparent or translucent platform 26; figs. 2A & 3, [0047-0048, 0050-0051]) having an interior surface (Lee; interior surface of wells 24 of the platform 26; figs. 2A & 3, [0047-0048, 0050]) and being configured to house an assay solution (Lee disclose the wells house PCR mixture 16; figs. 1 & 2B, [0042-0043, 0047]); and
a nanostructure layer conformally integrated onto the assay container and directly contacting the interior surface (Lee disclose the interior of wells 24 comprise a thin plasmonic gold (Au) film; figs. 2B, [0044-0045, 0048]), the nanostructure layer being plasmonic and thermally conductive (Lee disclose the thin Au film 20 deposited within wells 24 is used as a light-to-heat converter, serving as a source of plasmonic (i.e. plasmon-excitable) photothermal heating for the PCR thermal cycling; figs. 1, 2B & 3, [0048, 0050]), and comprising a plurality of nanofeatures having non-uniform sizes and/or non-uniform shapes (Lee disclose the thin Au film 20 comprise nanometer sized grains deposited by an electron beam evaporation method; fig. 11, [0012, 0044, 0083]).
Regarding claim 2, Lee disclose the assay repository device of claim 1 above, wherein the assay container comprises a reaction tube, a well plate, a lab-on-chip, or a microarray (Lee; figs. 2A & 3, [0047, 0049-0051]).
Regarding claim 4, Lee disclose the assay repository device of claim 1 above, wherein the nanostructure layer is configured to be directly contacting the assay solution in the assay container (Lee disclose the PCR mixture 16 in direct contact with the nanostructure layer 20 in the assay container 26; figs. 1-3 & 11, [0042-0043, 0047, 0055, 0083]).
Regarding claim 5, Lee disclose the assay repository device of claim 1 above, wherein the nanostructure layer is configured to increase heat ramp and cooldown rates of the assay repository device to enable rapid lysis or thermocycling (Lee; figs. 5B-F, 6A-B, 10, 12, 13A-B, 14A-B, 16, [0011, 0022-0024, 0029, 0031, 0032-0034, 0036-0037, 0039, 0043, 0076, 0085, 0090], NOTE: When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112).
Regarding claim 6, Lee disclose the assay repository device of claim 1 above, wherein the nanostructure layer is configured to absorb more than 90% of incoming light in an ultraviolet to near infrared wavelength range, and wherein the nanostructure layer has a thermal conductivity greater than 100 W/mK (Lee; Table 1, “Gold”. NOTE: When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01. As stated in In re Best, 562 F.2d 1252, 1255 (CCPA 1977): Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. Whether the rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness” under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See MPEP 2112).
Regarding claim 7, Lee disclose the assay repository device of claim 1 above, wherein each one of the plurality of nanofeatures has a circular shape, a spherical shape, an ellipsoidal shape, a prismatic shape, or a tapered shape (Lee disclose the nanofeatures having various nanometer sized grains deposited by an electron beam evaporation method resulting in various shapes; fig. 11, “Au film surface”, [0083]).
Regarding claim 8, Lee disclose the assay repository device of claim 1 above, wherein the nanostructure layer comprises at least one of a metal, a doped semiconductor, or an undoped semiconductor (Lee; [0045]).
Regarding claim 9, Lee disclose the assay repository device of claim 8 above, wherein the nanostructure layer comprises at least one of aluminum (Al), gold (Au), silver (Ag), titanium (Ti), tungsen (W), copper (Cu), palladium (Pd), tantalum (Ta), tantalum nitride (TaN), titanium nitride (TiN), Niobium (Nb), or p-doped silicon (p Si) (Lee; [0045]).
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 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.
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 35 U.S.C. 103 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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee, and further in view of Ceremony et al. (US 2017/0239663 – hereinafter “Ceremony”).
Regarding claim 3, Lee disclose the assay repository device of claim 1 above, wherein the nanostructure layer has a uniform thickness along the interior surface of the assay container (Lee disclose the thin Au film having a uniform thickness; 4A-D, [0021-0061]), and wherein the interior surface comprises a surface portion (Lee disclose the assay container 26 comprise wells 24 having an interior surface with the thin Au film deposited within the wells 24 surface; figs. 2A & 3, [0048]).
Lee does not teach the interior surface comprises a non-flat surface portion.
However, Ceremony the analogous art of an assay container (Ceremony; figs. 1-3, #101, #102, [0035]) comprising an interior surface, (Ceremony; figs. 1-3, #103, [0035]), wherein the interior surface comprises a non-flat surface portion (Ceremony; figs. 2-3, #103).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the interior surface of Lee with the interior surface comprising a non-flat surface portion, as in Ceremony, because Ceremony teach the assay container having an interior surface comprising a non-flat surface portion is well-known and convention in the art. Further, changes in shape do not patentably distinguish over the prior art. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). One of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Lee and Ceremony both teach an assay container configured to house an assay solution in an interior surface.
Other References Cited
The prior art of made of record and not relied upon is considered pertinent to Applicant’s disclosure include:
Bowers et al. (US 2009/0296076) disclose a curved interior surface for negatively-refractive focusing and sensing of electromagnetic energy.
Dahawan et al. (US 2011/0166045) disclose various shaped nanostructures and method of fabricating.
Chou et al. (US 2021/0069709) disclose an assay container comprising an interior surface for housing a sample, and comprising a heating and cooling layer disposed outside the interior surface.
Citations to art
In the above citations to documents in the art, an effort has been made to specifically cite representative passages, however rejections are in reference to the entirety of each document relied upon. Other passages, not specifically cited, may apply as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CURTIS A THOMPSON whose telephone number is (571) 272-0648. The examiner can normally be reached on M-F: 7:00 a.m. - 5:00 p.m..
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E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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/C.A.T./Examiner, Art Unit 1798
/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798