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 Interpretation
The previous 112(f) interpretation of “vibration unit” is withdrawn in light of applicant’s amendments.
Election/Restrictions
Newly submitted claims 21-23 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The invention originally claimed was directed to the on-substrate spray VSSI embodiment shown in Figs. 1-5, as is evident from limitations such as that in claim 5 describing “microchannels to direct fluid flow.” Said invention is not disclosed to include a capillary. Claims 21-23 are directed to what the instant specification refers to as a “cVSSI” or combined capillary electrophoresis -VSSI, which is a separate embodiment and invention that is demonstrated in Figs. 7-9. In that embodiment, a capillary is fixed to the rigid substrate VSSI substrate. as such is not the same as the on-substrate spray VSSI embodiment which was originally claimed.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-23 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claims 1-3, 5-8, 14-15, 17-19 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by US 2014/0070088 A1 [Otsuka].
Regarding Claim 1:
Otsuka teaches an apparatus for ionizing a liquid sample (abstract, Fig. 2), the apparatus comprising:
(a) a thin, rigid substrate extending from a proximal end to a sharp edge extending along a distal end (Fig. 2 (3)- the distal edge around probe (3)), the proximal end comprising a flat surface (the proximal end of Fig. 2 (3) is a flat surface); and
(b) a vibration generator comprising an electromechanical transducer coupled to the flat surface of the thin, rigid substrate (Fig. 2 (27), para 58), the vibration generator configured to vibrate the sharp edge (para 58) to ionize liquid sample (para 59).
Regarding Claim 2:
Otsuka teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises glass, quartz, silicon, hard plastic, a ceramic material, metal, a composite material, fused silica, polyether ether ketone (PEEK), pyrolytic boron nitride (PBN), or a combination thereof (para 62-glass).
Regarding Claim 3:
Otsuka teaches the apparatus of claim 2, wherein the thin, rigid substrate comprises glass (para 62).
Regarding Claim 5:
Otsuka teaches the apparatus of claim 4, wherein the sharp edge is a corner (distal corners of Fig. 2 (3)).
Regarding Claim 6:
Otsuka teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises an irregular shape (para 21 -the substrate has an irregular shape in that it is “needle-shaped”).
Regarding Claim 7:
Otsuka teaches the apparatus of claim 6, wherein the irregular shape comprises a triangle The needle shaped probe described in para 21 is triangular at its tip.
Regarding Claim 8:
Otsuka teaches apparatus of claim 1, wherein the thin, rigid substrate comprises microchannels to direct fluid flow (para 45).
Regarding Claim 14:
Otsuka teaches the apparatus of claim 13, wherein the electromechanical transducer is a piezoelectric transducer (para 58).
Regarding Claim 15:
Otsuka teaches the apparatus of claim 4, wherein the vibration generator is fixed to the proximal end of the thin, rigid substrate to form a combined body (Fig. 2).
Regarding Claim 17:
Otsuka teaches the apparatus of claim 15, wherein the vibration frequency of the combined body is its resonant frequency (para 64).
Regarding Claim 18:
Otsuka teaches a method for producing a spray of droplets (Fig. 2 (9)), the method comprising
exciting the vibration generation of the apparatus of claim 1 to cause the sharp edge of the thin, rigid substrate (Fig. 1 (3) – distal edge) of the apparatus to vibrate, generating a vibrating sharp edge (para 62); and
contacting a liquid sample with the vibrating sharp edge thereby producing droplets (paras 59-61, Fig 2).
Regarding Claim 19:
Otsuka teaches the method of claim 18, wherein the spray of droplets comprises an aerosol (Fig. 1 (9)).
Claims 1, 6, 7, and 10 are rejected under 35 U.S.C. 102(a)(1) and (2) as being anticipated by US 2016/0203968 A1 [Otsuka II].
Regarding Claim 1:
Otsuka II teaches an apparatus for ionizing a liquid sample (para 89, Fig. 6), the apparatus comprising:
(a) a thin, rigid substrate extending from a proximal end to a sharp edge extending along a distal end, the proximal end comprising a flat surface (Fig.1 (11), para 25); and
(b) a vibration generator comprising an electromechanical transducer coupled to the flat surface of the thin, rigid substrate, the vibration generator configured to vibrate the sharp edge to ionize liquid sample. Otsuka II paras 101-102 explain that oscillator (102) is an electromechanical transducer. Para 25 explains that the oscillator may be incorporated into the supporting unit at the flat end of the probe.
Regarding Claim 6:
Otsuk II a teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises an irregular shape. Para 25
Regarding Claim 7:
Otsuka II teaches the apparatus of claim 6, wherein the irregular shape comprises a triangle. Para 25.
Regarding Claim 10:
Otsuka II teaches the apparatus of claim 1, wherein the thin, rigid substrate comprises a glass microscope slide (para 147, (801)).
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.
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 20 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka in view of US 10,068,200 B1 [Greving].
Regarding Claim 20:
Otsuka teaches the method of claim 18, but fails to specify that the spray of droplets comprises an emulsion.
Greving teaches performing mass spectrometry of samples including emulsions (12:37-47). It would have been obvious to one of ordinary skill in the art before the effective time of filing to mass analyze the emulsion samples of Greving using the ionization device and mass spectrometer of Otsuka. One would have been motivated to do so because Greving demonstrates that such samples can be analyzed via mass spectrometry.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of US 2006/0214101 A1 [Takahashi].
Regarding Claim 9:
Otsuka II teaches the apparatus of claim 1, wherein the thin, rigid substrate is chemically modified in order to increase hydrophobicity (para 147). However, Otsuka II fails to specify that the substrate is modified with a polymethylsiloxane (PDMS) or another silicone-based network.
Takahashi teaches using PDMS to modify a sample substrate in order to increase its hydrophobicity (paras 342, 344). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the unspecified hydrophobic coating of Otsuka II with the PDMS of Takahashi. One would have been motivated to do so since Takahashi demonstrates that PDMS is a known hydrophobic coating for sample substrates.
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Otsuka II in view of ThorLabs, “Precision Cover Glasses and Microscope Slides.” 9 April 2016. (retrieved from https://web.archive.org/web/20160409022329/https://www.thorlabs.com/newgrouppage9.cfm?objectgroup_id=9704) [hereinafter Thor].
Regarding Claim 11:
Otsuka II teaches the apparatus of claim 1, but fails to specify its glass slide comprises a top surface area of from about 24x50 mm to about 24x75 mm.
Thor teaches glass slides with a top surface area of 24x50 mm (first page, first table). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the generic glass slide of Otsuka II with the 24x50 mm slide of Thor. This would have been obvious because the simple substitution of one known glass slide for another yields predictable results to one of ordinary skill in the art.
Regarding Claim 12:
Otsuka II teaches the apparatus of claim 1, but fails to specify that the glass slide comprises a thickness of from about 0.08 mm to about 0.19 mm.
Thor teaches glass slides with a thickness of 0.170 mm (first page, first table). It would have been obvious to one of ordinary skill in the art before the effective time of filing to replace the generic glass slide of Otsuka II with the 0.170 mm thick slide of Thor. This would have been obvious because the simple substitution of one known glass slide for another yields predictable results to one of ordinary skill in the art.
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 1-3, 8, 9, 14, 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15, 15, 15, 15, 15, 15, 15, 16-18, respectively, of U.S. Patent No. 11,600,481 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims include all of the limitations of the pending claims.
Response to Arguments
The 112 rejections of record are withdrawn in light of applicant’s amendments.
The rejections in light of Trimpin are withdrawn in light of applicant’s amendments.
Applicant argues that Otsuka fails to disclose a probe with a flat surface at a proximal side of the probe. This is not persuasive. Fig. 2 of Otsuka clearly demonstrates at least some degree of a proximal flat side with a vibration generator coupled thereto.
The rejections in light of Banstola are withdrawn in light of applicant’s amendments.
Applicant argues that Otsuka II fails to disclose a probe with a flat surface at a proximal side of the probe. This is not persuasive. Fig. 1 and para 25 of Otsuka demonstrate at least some degree of a proximal flat side with a vibration generator coupled thereto.
In response to applicant's argument that “Greving does not disclose or suggest producing an emulsion using the alleged apparatyus of Otsuka”, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant argues that the claims are patentably distinct from US 11,600,481 due to their amendments. As is demonstrated in the non-statutory double patenting rejection above, this is not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WYATT A STOFFA whose telephone number is (571)270-1782. The examiner can normally be reached M-F 0700-1600 EST.
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WYATT STOFFA
Primary Examiner
Art Unit 2881
/WYATT A STOFFA/Primary Examiner, Art Unit 2881