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 election without traverse of Species A1 of Species A, encompassing claims 1-7, and 10-16, in the reply filed on 4/16/2026 is acknowledged.
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.
Claims 11, 15 and 16 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation "a chemical reaction" in line 3. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required.
Claim 15 recites the limitation "a photothermal material" in line 3. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required.
Claim 16 recites the limitation "the first sample" in line 1. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 102
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)(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.
Claims 1-3, and 10-16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Jung et al (PG-PUB US 2023/0044621).
Regarding claim 1, Jung et al disclose a sample analyzer/detection kit (ABSTRACT). The apparatus comprises
(1) a planar substrate 112 (i.e., a plate-shaped detection member, Figures 2B & 2C, paragraph [0073]);
(2) a photothermal film 131a disposed on one side of the substrate 112 (i.e., a first photothermal area … and fixed a photothermal material …, Figure 2C, paragraphs [0078] –[0080]);
(3) at least one well 111b surrounded by the photothermal film 131a for receiving a sample therewithin, wherein the photothermal film is configured to heat the sample in the well by generating heat from a light source (i.e., a first sample area … adjacent to the first photothermal area …, Figures 2B & 2C, paragraphs [0004], [0014], [0040], & [0045]).
Regarding claim 2, Jung teaches that the photothermal film 131a surrounds the well 111b and the through hole of well 111b may be a cylindrical shape (Figures 2B & 2C, paragraphs [0073] & [0078]).
Regarding claim 3, Jung teaches that the photothermal film 131a is disposed on the well 111b and the through hole of well 111b may be a cylindrical shape (Figures 2B & 2C, paragraphs [0073] & [00758).
Regarding claim 10, it should be noted that “a sample” and “a detection material” are materials worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115). Moreover, the limitations of “receives heat from … and causes a chemical reaction …” are related to manners of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 11, it should be noted that “the sample”, “the detection material” and “an indicator whose color changes according to pH” are materials worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115). Moreover, the limitations of “pH changes when a chemical reaction occurs” are related to manners of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Regarding claim 12, Jung teaches that an upper glass layer and a lower glass layer are provided on the upper side and the lower side of the chip having the substrate (Figure 4, paragraph [0113]).
Regarding claim 13, Jung teaches that the upper glass layer and the lower glass layer include edges and cover the entire chip 110b (Figure 4, paragraph [0113]).
Regarding claim 14, Jung teaches that the chip 110b is enclosed between the upper glass layer and the lower glass layer having edges (Figure 4, paragraph [0113]).
Regarding claim 15, Jung teaches a plurality of wells 111b for receiving the sample therewithin (Figures 2B & 2C, paragraphs [0004], [0040], & [0045]).
Regarding claims 16, it should be noted that “the first sample”, “a detection material” and “an indicator whose color changes according to pH” are materials worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115). Moreover, the limitations of “receiving heat from … to cause a chemical reaction …” are related to manners of operating the device, which does not differentiate the apparatus claim from the prior art (MPEP 2114).
Claim Rejections - 35 USC § 103
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 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 4 is rejected under 35 U.S.C. 103 as being unpatentable over by Jung et al (PG-PUB US 2023/0044621) as applied to claim 1 above, and further in view of Wang et al (PG-PUB US 2015/0353385).
Regarding claim 4, Jung teaches that the photothermal material comprises carbon black and the photothermal film 131a is supported on the substrate 112 comprising polymer or metal (Figure 2C, paragraphs [0071], [0077], & [0081]), but does not teach the substrate comprising cellulose. However, Wang et al disclose a photothermal material supported on a substrate (ABSTRACT). Wang teaches that the photothermal material comprises carbon black and is supported on a substrate, wherein the substrate includes material that has mechanically stability and is cost effective as well as conducts heat, such as paper (i.e., cellulose having hygroscopicity, paragraphs [0030] – [0031],& [0033]).
Therefore, it would be obvious for one having ordinary skill in the art to utilize paper for a substrate to support the photothermal material as suggested by Wang in order to use a material having mechanically stability and conducting heat with low cost within the device of Jung.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over by Jung et al (PG-PUB US 2023/0044621) as applied to claim 1 above, and further in view of Boydston et al (PG-PUB US 2020/0406539).
Regarding claim 5, Jung teaches that the photothermal material comprises carbon black and other material (paragraphs [0081] – [0082]),but does not teach the photothermal material as being a mixture of carbon black and PDMS. However, Boydston et al disclose photothermal material (ABSTRACT). Boydston teaches that the photothermal material comprises carbon black combined with PDMS as a dispersing agent to form a matrix to surround and embed the photothermal material (Figure 2, paragraphs [0021] – [0022]).
Therefore, it would be obvious for one having ordinary skill in the art to combine carbon black with PDMS as suggested by Boydston in order to form uniformly dispersed matrix for the photothermal material within the device of Jung.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Regarding claim 6, Boydston teaches that the wavelength of the photothermal material is in a range of 700 nm to 1200 nm (paragraph [0031])
Regarding claim 7,Boydston teaches 1% of carbon black in the photothermal material (paragraph [0055] & Table 1).
Conclusion
Claims 1-7, and 10-16 are rejected. Claims 8-9, and 17-24 are withdrawn.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIUYU TAI whose telephone number is (571)270-1855. The examiner can normally be reached Mon.-Fri. 9:00-5:00.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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