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 .
Claim Status
Claim 1-20 are pending with claims 1-9 under examination and claims 10-20 withdrawn from consideration.
Response to Amendment
The claim amendments, received on 05/07/2026, are accepted and the previous claim objections are withdrawn.
Applicant’s arguments and remarks towards the 112(b) rejection was found persuasive. Accordingly, the 112(b) rejection has been withdrawn.
Based on the amended claims and remarks, the previous prior art rejection over Lee has been withdrawn and a new prior art rejection set forth (see below).
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.
Claim(s) 1-2 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al. (US 2018/0080064; already of record – hereinafter “Lee”), and further in view of Jeong et al. (US 2021/0205816 – hereinafter “Jeong”).
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]).
Lee does not teach the nanostructure layer contacting an entirety of the interior surface of the assay container.
However, Jeong teach the analogous art of an assay container (Jeong; fig. 1, #100, [0046]) comprising a nanostructure layer conformally integrated onto the assay container and directly contacting an entirety of the interior surface (Jeong; figs. 1 and 3-4, #210, #220, #230, [0046-0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the nanostructure layer of Lee to cover an entirety of the interior surface of the assay container, as in Jeong, because Jeong teach covering the entirety of the interior surface of the assay container with the nanostructure layer aids in conversion of light energy to thermal energy based on a plasmonic photothermal effect, thereby allowing more efficient heating of the PCR apparatus (Jeong; [0045]). On of ordinary skill in the art would have expected this modification could have been performed with a reasonable expectation of success since Lee and Jeong both teach devices for plasmonic heating for thermal cycling of PCR.
Regarding claim 2, modified 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, modified 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, modified 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, modified 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, modified 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, modified 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, modified 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), tungsten (W), copper (Cu), palladium (Pd), tantalum (Ta), tantalum nitride (TaN), titanium nitride (TiN), Niobium (Nb), or p-doped silicon (p Si) (Lee; [0045]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lee and Jeong, and further in view of Ceremony et al. (US 2017/0239663; already of record – hereinafter “Ceremony”).
Regarding claim 3, modified 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.
Response to Arguments
Applicant’s arguments, see pages7-9 of their remarks, filed 05/07/2026, with respect to the rejection(s) of claim(s) 1-2 and 4-9 under 35 U.S.C. 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jeong for teaching the amended limitations in claim 1.
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
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 extension fee 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 date of this final action.
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/C.A.T./Examiner, Art Unit 1798
/BENJAMIN R WHATLEY/Primary Examiner, Art Unit 1798
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