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 .
Remarks
This Office Action fully acknowledges applicants remarks filed 05/01/2026. Claims 1, 3-12, 14 and 16-20 are pending. Claims 2, 13 and 15 were canceled.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
1. Claims 1, 3-9, 14 and 16 are rejected under 35 USC 103 as being unpatentable in view of Tao et al.
Tao et al. discloses a system that as that includes a “metal (e.g., gold) coated glass substrate 102.” [0075] The substrate is coated with capture molecules, such that the specific binding of a target analyte in a sample solution can be detected and identified. [0037].
In use, incident light at an angle is selected to create surface plasmon resonance on the metallic layer. [0038] The incident angle is selected to achieve total reflection of the light, thereby scattering light from the surface and from the target molecules bound to the surface. Light scatted by the surface and by the target molecules bound to the surface form a series of images. (Abstract)
Tao et al. teaches that surface plasmonic waves are excited by light from the bottom of a gold-coated glass slide. [0075]
The system of Tao et al. shown in Fig. 1B appears to be identical to applicant’s system shown in applicant’s Fig. 1B.
Therefore, in Tao et al. the incident light that creates surface plasmon resonance on the metallic layer would heat a heating space within the detection field above the metallic layer in the same manner as applicant’s invention.
In Tao et al. since the space in the detection field above the metallic layer is heated, that would leave the temperature in areas in the detection field further above the metallic layer unchanged.
Tao et al. does not specifically teach adjusting a power density of the incident light such that the temperature in the selected heating space within the detection field is substantially uniformly changed to a selected temperature.
However, Tao et al. teaches that increasing the incident light intensity can cause the heating of the molecules on the sensor surface [0008], rendering it obvious to adjust the incident light incident light intensity to control heating.
It would have been obvious to one of ordinary skill in the art to modify Tao et al. to adjust the incident light intensity by adjusting the power density of the incident light such that the temperature in the selected heating space within the detection field is substantially uniformly changed to a selected temperature, for purposes of providing consistent, uniform detection of target molecules across the detection area. Since the system of Tao et al. seems to be identical to applicant’s system a uniform temperature in the detection field would be expected.
Tao et al. teaches controlling heat that can damage biological molecules [0122], but does not teach that the selected temperature is in a range of about 33 °C to about 80 °C.
It would have been obvious to one of ordinary skill in the art to conduct routine engineering optimization experimentation and modify Tao et al. to use a suitable temperature, including one in the range of about 33 °C to about 80 °C to detect desired molecules that can be damaged by higher temperatures.
I.) Regarding applicant’s claim 1, as noted above Tao et al. renders all the limitations of claim 1 obvious.
Therefore, Tao et al. renders claim 1 obvious.
II.) Regarding applicant’s claim 3, as noted above Tao et al. renders claim 1 obvious from which claim 3 depends.
Claim 3 recites flowing a fluidic material over the first surface of the substrate in the selected heating space, which fluidic material is substantially free of plasmonic metallic nanoparticles.
Tao et al. only teaches polystyrene nanoparticles and does not teach metallic nanoparticles.
Therefore, Tao et al. renders claim 3 obvious.
III.) Regarding applicant’s claim 4, as noted above Tao et al. renders claim 1 obvious from which claim 4 depends.
Claim 4 recites that the Z-dimension extends above the metallic layer about 100 nm.
Tao et al. teaches that surface plasmon resonance (SPR) imaging system has several unique features. First, the evanescent field intensity is localized within about 100 nm from the SPR sensor surface (e.g., gold-coated glass slide). [0071]
Therefore, Tao et al. renders claim 4 obvious.
IV.) Regarding applicant’s claim 5, as noted above Tao et al. renders claim 1 obvious from which claim 5 depends.
Claim 5 recites that the selected heating space comprises X- and Y-dimensions and wherein the method comprises introducing the incident light toward the second surface of the substrate such that an area defined by the X- and Y-dimensions of the selected heating space is within a range of about 1 to about 1000 µm2.
Tao et al. teaches that a uniform receptor surface coverage was about 1000 μm2. [0113]
Therefore, Tao et al. renders claim 5 obvious.
V.) Regarding applicant’s claim 6, as noted above Tao et al. renders claim 1 obvious from which claim 6 depends.
Claim 6 recites changing a focus level of the incident light to adjust the area defined by the X- and Y-dimensions of the selected heating space within the range of about 1 to about 1000 µm2.
As noted above Tao et al. teaches Tao et al. teaches that a uniform receptor surfaces coverage was about 1000 μm2. [0113] This coverage area corresponds to the detection area that would be heated by Tao et al. as noted above.
Therefore, Tao et al. renders claim 6 obvious.
VI.) Regarding applicant’s claim 7, as noted above Tao et al. renders claim 1 obvious from which claim 7 depends.
Claim 7 recites that the metallic layer comprises gold (Au).
As noted above, Tao et al. teaches a metallic layer that comprises gold.
Therefore, Tao et al. renders claim 7 obvious.
VII.) Regarding applicant’s claim 8, as noted above Tao et al. renders claim 1 obvious from which claim 8 depends.
Claim 8 recites that the selected heating space comprises at least one analyte and wherein the method comprises detecting light scattered by the analyte to produce an analyte imaging data set.
As noted above, Tao et al. teaches that light scatted by the surface and by the target molecules, including analytes, bound to the surface form a series of images. (Abstract) and [0009]
Therefore, Tao et al. renders claim 8 obvious.
VIII.) Regarding applicant’s claim 9, as noted above Tao et al. renders claim 8 obvious from which claim 9 depends.
Claim 9 recites that the analyte comprises one or more biomolecules.
As noted above Tao et al. teaches proteins [0117] which applicant notes are biomolecules in [0023].
Therefore, Tao et al. renders claim 9 obvious.
2. Claims 10 and 11 are rejected under 35 USC 103 as being unpatentable over Tao et al. as applied to claim 9 above and further in view of U.S. Patent Application Publication No. 2018/0220653 to Nesterov et al.
I.) Regarding applicant’s claim 10, as noted above Tao et al. renders claim 9 obvious from which claim 10 depends.
Claim 10 recites that one or more cells comprise the biomolecules.
Tao et al. does not teach cell imaging.
Nesterov et al. teaches that TRPV family members can be detected using surface plasmon resonance. [0103]
It would have been obvious to one of ordinary skill in the art to modify Tao et al. to detect TRPV1 using surface plasmon resonance, in view of Nesterov et al. teaching such detection is possible together with surface plasmon resonance.
Therefore, Tao et al. in view of Nesterov et al. renders claim 10 obvious.
II.) Regarding applicant’s claim 11, as noted above Tao et al. renders claim 9 obvious from which claim 11 depends.
Claim 11 recites that the biomolecules comprise transient receptor potential vanilloid 1 (TRPV1) ion channels.
Tao et al. does not teach detecting TRPV1.
As noted above, Nesterov et al. teaches that TRPV family members can be detected using surface plasmon resonance. [0103]
It would have been obvious to one of ordinary skill in the art to modify Tao et al. to detect TRPV1 using surface plasmon resonance, in view of Nesterov et al. teaching such detection is possible together with surface plasmon resonance.
Therefore, Tao et al. in view of Nesterov et al. renders claim 11 obvious.
3. Claim 12 is rejected under 35 USC 103 as being unpatentable over Tao et al. as applied to claim 9 above and further in view of U.S. Patent No. 10,620,195 to Prins et al.
I.) Regarding applicant’s claim 12, as noted above Tao et al. renders claim 8 obvious from which claim 12 depends.
Claim 12 recites that the analyte comprises one or more fluorescent labels and wherein the method further comprises detecting fluorescent light emitted from the analyte.
Tao et al. does not teach the analyte comprises one or more fluorescent labels and wherein the method further comprises detecting fluorescent light emitted from the analyte.
Prins et al. teaches that analyte detection and be done using plasmonic detection and fluorescence. (column 4, lines 24-43)
It would have been obvious to one of ordinary skill in the art to modify Tao et al. to include fluorescent labels on analytes for purposes of detecting the analytes by optical fluorescence detection as taught by Prins et al. in addition to the light scattering of the surface plasmonic resonance of Tao et al. for proposes of conclusive detection using both detection methods.
Therefore, Tao et al. in view of Prins et al. renders claim 12 obvious.
4. Claims 17-19 are rejected under 35 USC 103 as being unpatentable over Tao et al.
As noted above, Tao et al. discloses a system that as that includes a glass substrate having metal (e.g., gold) coated on a second side. [0075] The first side of the substrate is coated with capture molecules, such that the specific binding of a target analyte in a sample solution can be detected and identified. [0037].
In use, incident light at an angle is selected to create surface plasmon resonance on the metallic layer. [0038] The incident angle is selected to achieve total reflection of the light, thereby scattering light from the surface and from the target molecules bound to the surface. Light scatted by the surface and by the target molecules bound to the surface form a series of images. (Abstract)
Tao et al. teaches that surface plasmonic waves are excited by light from the bottom of a gold-coated glass slide. [0075]
The system of Tao et al. shown in Fig. 1B is identical to applicant’s system shown in applicant’s Fig. 1B.
Therefore, in Tao et al. teaches the incident light that creates surface plasmon resonance on the metallic layer would heat a heating space within the detection field above the metallic layer in the same manner as applicant’s invention.
Tao et al. teaches a controller that can be configured to control one or more components of system 100, including cameras 108, 114, SLD 111, fluid flow to and away from system, and to process data or images collected one or more components of system 100. [0077]
As noted above Tao et al. teaches Tao et al. teaches that a uniform receptor surfaces coverage was about 1000 μm2. [0113] This coverage area corresponds to the detection area that would be heated by Tao et al. as noted above.
Since the system of Tao et al. shown in Fig. 1B is identical to applicant’s system shown in applicant’s Fig. 1B, using the controller in Tao et al. to adjust a power density of the incident light would have been obvious to one skilled in the art before applicant’s effective filing date to make a temperature in the selected heating space within the detection field substantially uniformly changed to a selected temperature.
I.) Regarding applicant’s claim 17, as noted above Tao et al. renders all the elements of claim 17 obvious.
Therefore, Tao et al. renders claim 17 obvious.
II.) Regarding applicant’s claim 18, as noted above Tao et al. renders claim 17 obvious from which claim 18 depends.
Claim 18 recites that a fluidic device that comprises the substrate.
As shown in Fig. 1B of Tao et al., Tao et al. teaches a fluidic device.
Therefore, Tao et al. renders claim 18 obvious.
III.) Regarding applicant’s claim 19, as noted above Tao et al. renders claim 17 obvious from which claim 19 depends.
Claim 19 recites that the fluidic material is substantially free of plasmonic metallic nanoparticles.
Tao et al. only teaches polystyrene nanoparticles and does not teach metallic nanoparticles.
Therefore, Tao et al. renders claim 19 obvious.
5. Claim 20 is rejected under 35 USC 103 as being unpatentable over Tao et al.
As noted above, Tao et al. discloses a system that as that includes a glass substrate having metal (e.g., gold) coated on a second side. [0075] The first side of the substrate is coated with capture molecules, such that the specific binding of a target analyte in a sample solution can be detected and identified. [0037].
In use, incident light at an angle is selected to create surface plasmon resonance on the metallic layer. [0038] The incident angle is selected to achieve total reflection of the light, thereby scattering light from the surface and from the target molecules bound to the surface. Light scatted by the surface and by the target molecules bound to the surface form a series of images. (Abstract)
Tao et al. teaches that surface plasmonic waves are excited by light from the bottom of a gold-coated glass slide. [0075]
The system of Tao et al. shown in Fig. 1B is identical to applicant’s system shown in applicant’s Fig. 1B.
Therefore, in Tao et al. teaches the incident light that creates surface plasmon resonance on the metallic layer would heat a heating space within the detection field above the metallic layer in the same manner as applicant’s invention.
As noted above Tao et al. teaches Tao et al. teaches that a uniform receptor surfaces coverage was about 1000 μm2. [0113] This coverage area corresponds to the detection area that would be heated by Tao et al. as noted above.
Since the system of Tao et al. shown in Fig. 1B is identical to applicant’s system shown in applicant’s Fig. 1B, using the controller to adjust a power density of the incident light would make a temperature in the selected heating space within the detection field substantially uniformly changed to a selected temperature.
As for claim 20 reciting a computer readable media comprising non-transitory computer- executable instructions which, when executed by at least one electronic processor, performs the method steps above, Tao et al. teaches a controller that can be configured to control one or more components of system 100, including cameras 108, 114, SLD 111, fluid flow to and away from system, and to process data or images collected one or more components of system 100. [0077]
Including computer readable media comprising non-transitory computer- executable instructions for the controller to perform would have been an obvious manner of automating system/method of Tao et al.
I.) Regarding applicant’s claim 20, as noted above Tao et al. renders all the limitations of claim 20 obvious.
Therefore, Tao et al. renders claim 20 obvious.
Response to Arguments
Applicant’s arguments with respect to claims 1, 3-12, 14 and 16-20 have been considered but are moot because the new ground of rejection which now relies upon Tao et al. solely under 35 USC 103.
Otherwise, applicant’s arguments filed 05/01/2026 have been fully considered, but are not persuasive.
On page 7 of applicant’s response applicant argues that Tao teaches away from intentional temperature modulation because the primary objective of Tao is to provide an SPR imaging system where heating is characterized as a detrimental side effect to be mitigated.
Applicant notes that Tao explicitly states that incident light causes heating that leads to "instability of the optical system and structure of the target molecules" (Tao [0080]). Tao's solution is to use fluidics to cool down the substrate to maintain stability.
As noted above, Tao et al. teaches controlling heat that can damage biological molecules (analytes). [0122]
Further as noted above, the system of Tao et al. shown in Fig. 1B is identical to applicant’s system shown in Fig. 1B.
Since Tao et al. teaches that increasing the incident light intensity can cause the heating of the molecules on the sensor surface [0008], it would have been obvious to adjust the incident light incident light intensity to control heating.
Tao et al.’s teaching of cooling down the substrate as argued by applicant, shows that Tao et al. recognizes controlling temperature effects.
Tao et al.’s teaching that surface plasmonic waves are excited by light from the bottom of a gold-coated glass slide, makes it obvious to one skilled in the art to conduct routine engineering optimizing experimentation to determine how to control temperature by adjusting light that causes surface plasmonic waves that cause heating.
Applicant’s argument on page 8 that Tao et al. failed to disclose adjusting power density to reach a selected temperature does not address or overcome the fact that it would have been obvious to adjust the power density to provide a desired temperature.
As noted, Tao et al.’s system and applicant’s system as shown in respective Figs. 1B are identical and Tao et al. teaches heat considerations, the incident light intensity as related to causing the heating of the molecules on the sensor surface, and biomolecules, rendering it obvious to control/adjust power density of the incident light to control temperature.
On page 8 of applicant’s response applicant argues that Tao provides no teaching or mechanism to ensure that the incidental heating is "substantially uniform" across the 3D heating space.
As noted, Tao et al.’s system and applicant’s system as shown in respective Figs. 1B are identical and Tao et al. teaches heat considerations and the incident light intensity as related to causing the heating of the molecules on the sensor surface, rendering it obvious to control/adjust power density of the incident light to control temperature above the glass substrate, which would be “substantially uniform” absent evidence to the contrary inasmuch as the similarity between applicant’s and Tao et al.’s systems and parameter that are controlled.
Applicant’s arguments concerning Zhang are moot inasmuch as Zhang is no longer relied upon.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ganesan et al. (“Plasmonic Layer as a Localized Temperature Control Element for Surface Plasmonic Resonance-Based Sensors,” Sensors 2021, 21(6), 2035) teaches that it is known that surface plasmon resonance can be used to provide controlled surface heating. (Abstract)
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.
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/M.S.G./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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