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
Claims 35-44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected system, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07 MAY 2026.
Applicant's election with traverse of Group I: Claims 1-10 (Applicant had recited Claims 1-19, Claims 11-19 were previously canceled and not considered in the restriction) in the reply filed on 07 MAY 2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden and / or examination burden. This is not found persuasive because the inventions require a different field of search (e.g. different class / subclass, method are classified in USPC 436, CPC C12N 15/1013, and devices are classified in USPC 422, CPC B01L 3/02, use and search of different electronic resources and/or employing different search strategies or search queries), thus there is a no serious burden and / or examination burden.
Applicant even goes on to compare language in table format. Even in the first rows, Claim 1 is directed to a method; Claim 35 is directed to a flow -through magnetic bead processing system. These are completely different statutory classes. A method (with no other verbiage or description) cannot deduce a flow -through magnetic bead processing system and vice versa.
The requirement is still deemed proper and is therefore made FINAL.
Status of Claims
In the ELECTION on 07 MAY 2026, Applicant had elected Group I for prosecution. In the election on pages 6 of 9 and 9 of 9, Applicant had recited Group I (claims 1-19). As previously stated on the CTRS only pending claims were Claims 1-10 and 35-44. In the claim set considered on 14 SETEPBMER 2023, Claims 11-34 were ‘Canceled’. Claims 11-19 were never considered.
In the claim set on 07 MAY 2026, Claims 1-10 are ‘Original’; Claims 11-34 are ‘Canceled’; Claims 35-44 are ‘Withdrawn’.
Current pending claims are Claims 1-10 are pending and are considered on the merits below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07 DECEMBER 2023 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 (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 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 and 5-10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by HORNES, US Publication No. 2010/0006509 A1, submitted on the Information Disclosure Statement on 07 DECEMBER 2023, US Patent Application Publications, Cite No. 1.
Applicant’s invention is directed towards a method.
Regarding Claim 1, the HORNES reference discloses a method, [0013, 0046], Claim 32, comprising:
providing a biological solution comprising a plurality of magnetic beads suspended therein, Figure 1 and 2, [0017, 0056], fluid 14 and beads 15;
introducing the biological solution to a tube via an opening in a tip portion of the tube, the tip portion of the tube comprising a magnetizable material arranged in a flow path of the biological solution, Claim 32, [0046, 0056, 0057], Figure 1 and 2, fluid 14 and beads 15 are introduced to tube 4 and bottom of tip 4 is the tip portion;
applying a magnetic field proximate to the tip portion of the tube using an electromagnetic coil, [0003, 0016, 0021, 0055, 0057], magnet 16 magnetizes tip portion of tube 4, Figure 1 and 2 magnet 16 is proximate to tube tip 4;
removing the biological solution from the tube via the opening in the tip portion, [0057], fluid 14 is drawn up into tube via nozzle 6, beads 15 are suspending in matrix 8 upon magnetizing of magnets 16; and
capturing the plurality of magnetic beads within the magnetizable material in the tip portion using the magnetic field, [0020, 0057, 0058, 0061], magnetizable spheres 8 are magnetized by magnet, upon drawing of fluid 14 into tube 4, magnetic bead 15 are suspending in matrix 8
Additional Disclosures Included are: Claim 2: wherein the method of claim 1, wherein the magnetizable material comprises a ferromagnetic matrix, Claim 3, [0018, 0019, 0021, 0059-0061], ferromagnetic material. ; Claim 3: wherein the method of claim 2, wherein the ferromagnetic matrix comprises a steel wool, [0019, 0021, 0059-0061], ferromagnetic material, such as steel, magnetizable element is a magnetizable membrane or filter…it may also be a filamentous element of magnetizable wires or fibres such as steel wool.; Claim 5: wherein the method of claim 2, wherein the ferromagnetic matrix comprises a nickel wool, [0019, 0021], ferromagnetic material such as a nickel.; Claim 6: wherein the method of claim 1, wherein the magnetizable material comprises a wire that is coiled within the tip portion, [0055, 0060], Figure 1, magnetic field maybe generated by winding coils.; Claim 7: wherein the method of claim 1, wherein the electromagnetic coil is wound around the tip portion, [0055, 0060, 0061], Figure 1, magnetic field may be generated by winding coils of wire around the tube 4 and passing a current through the coils (not shown).; Claim 8: wherein the method of claim 1, wherein the magnetic field is applied proximate to the tip portion by introducing a flow of current through the electromagnetic coil, [0021, 0057].; Claim 9: wherein the method of claim 1, further comprising removing the magnetic field proximate to the tip portion by interrupting a flow of current through the electromagnetic coil, [0042, 0055], magnetized by magnet. ; and Claim 10: wherein the method of claim 9, further comprising introducing a second solution to the tube via the opening in the tip portion such that the captured plurality of magnetic beads are suspended in the second solution, [0042], elution is carried out.
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 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 HORNES, US Publication No. 2010/0006509 A1, submitted on the Information Disclosure Statement on 07 DECEMBER 2023, US Patent Application Publications, Cite No. 1.
Regarding Claim 4 , the reference HORNES discloses the claimed invention, but is silent in regards to the steel wool comprises a mass of 20 mg or less.
However, HORNES does teach the size of the chamber can be any desired size and may depend on the size or concentration of the particles, [0032]. HORNES also suggests that magnetic particles can be of any shape, including spherical, granular or corpuscular and the size of the beads may more efficient in the recovery of the target substance because the greater amount of substance can be bound to per gram of the particles, [0013, 0018].
Since the amount and size of the magnetic particle may be modified as well as the size of the chamber, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the amount of steel wool comprise a mass of 20 mg or less to aid in the amount of recovery of the target substance, [0013, 0018].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
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