Prosecution Insights
Last updated: August 14, 2026
Application No. 18/242,658

SYSTEM AND METHOD FOR LEAKAGE CONTROL IN A PARTICLE CAPTURE SYSTEM

Non-Final OA §103§112§DP
Filed
Sep 06, 2023
Priority
Apr 16, 2019 — provisional 62/834,824 +4 more
Examiner
CROW, ROBERT THOMAS
Art Unit
1683
Tech Center
1600 — Biotechnology & Organic Chemistry
Assignee
Bio-Rad Laboratories Inc.
OA Round
1 (Non-Final)
42%
Grant Probability
Moderate
1-2
OA Rounds
1y 0m
Est. Remaining
74%
With Interview

Examiner Intelligence

Grants 42% of resolved cases
42%
Career Allowance Rate
298 granted / 715 resolved
-18.3% vs TC avg
Strong +32% interview lift
Without
With
+32.1%
Interview Lift
resolved cases with interview
Typical timeline
3y 11m
Avg Prosecution
54 currently pending
Career history
768
Total Applications
across all art units

Statute-Specific Performance

§101
2.3%
-37.7% vs TC avg
§103
39.7%
-0.3% vs TC avg
§102
9.2%
-30.8% vs TC avg
§112
32.7%
-7.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 715 resolved cases

Office Action

§103 §112 §DP
DETAILED ACTION Notice of Pre-AIA or AIA Status 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Preliminary Amendment and Status of the Claims 2. The preliminary amendment filed 8 April 2024, in which claim 1 was cancelled and new claims 2-21 wee added, is acknowledged and entered. Claims 2-21 are therefore under prosecution. Information Disclosure Statement 3. The Information Disclosure Statements filed 10 October 2023, 14 December 2023, 15 May 2024, 26 August 2024, and 29 October 2024 are acknowledged and have been considered. It is noted that the listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Specification 4. The use of trade names or marks used in commerce (including but not necessarily limited to Triton X-100), has been noted in this application. Any trade names or marks should be accompanied by the generic terminology; furthermore the terms should be capitalized wherever they appear or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM, or ® following the term. Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks. Claim Rejections - 35 USC § 112 5. The following is a quotation of the first paragraph of 35 U.S.C. 112(a): (a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112: The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention. 6. Claims 2-21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This is a new matter rejection. A. New claim 2 (upon which new claims 3-21 depend) recites each of the following: I. Polygonal-cross sections. While a review of the parent specification of Application No. 16/564,375 (now U.S. Patent No. 10,633,693 B1, hereafter the “‘693 Patent”) yields polygonal wells, the ‘693 Patent does not recite polygonal cross sections, which encompasses wells having non-uniform shapes with only a portion that is polygonal. no recitation of first of second subsets of arrays. II. First and second subsets of wells. A review of the ‘693 Patent yields no recitation of first of second subsets of arrays. B. New claim 6 recites probes configured to emit fluorescent signals. A review of the ‘693 Patent yields no recitation of fluorescent probes. C. Claim 16 recites “no target nucleic acid material.” A review of the ‘693 Patent yields no recitation of any well devoid of target material. D. Claim 21 recites 0oC. While the ‘693 Patent discusses 1oC through 95oC, it does not discuss 0oC. Thus, because the limitations discussed above are not found in the ‘693 Patent, each cited limitation constitutes new matter. 7. Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application as discussed above. 8. 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. 9. Claims 17, 19 and 21 are 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. A. Claim 17 is indefinite as it is unclear how the target nucleic acid material comprises a target protein content. B. The term “close-packed” in claim 19 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. C. Claim 21 is indefinite in the recitation “producing a well temperature…from 0oC through 95oC.” It is unclear if the method requires starting at 0oC and heating all the way up to 95oC,” or if the clam merely requires modulating a temperature within the recited range. Claim Rejections - 35 USC § 103 10. 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. 11. Claims 2-21 are rejected under 35 U.S.C. 103 as being unpatentable over Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014) and Fathollahi et al. (U.S. Patent Application Publication No. US 2018/0067038, published March 2018). Regarding claims 2-3, Hindson et al. teach methods comprising obtaining a biological sample containing a molecular analyte and a process reagent in an aqueous fluid (paragraph 0092), wherein the analyte is a target nucleic acid (paragraph 0027). The fluid is transferred (i.e., introduced) via an inlet into a fluid pathway, in the form of a flow channel, which distributed the fluid into multiple microwells in a microwell array (paragraph 0080) Hindson et al. also teach the fluid pathway transmit fluid to the array of wells, wherein analytes are loaded into a particular subset of microwells (paragraph 0103), and the loading is sequential (paragraph 0105); thus it would have been obvious to flow the fluid from a first subset of wells to a second subset of wells. In addition, it is noted that the claim does not designate a specific geometric placement of any subset or portion of the wells. Hindson et al. further teach distributing an oil, which is immiscible with water, into the fluid pathway after the loading of the analytes (paragraph 0082), and that the oil is a sealing fluid to isolate the analytes and process (i.e., free) reagents within the microwells (paragraph 0095), and that the methods have the added advantage of allowing quantitation of gene expression (Abstract). Thus, Hindson et al. teach the known techniques and limitations as discussed above. While Hindson et al. also teach the microwells are hexagonal in shape (paragraph 0084), Hindson et al. do not teach the claimed number of wells. However, Fathollahi et al. teach methods comprising the use of aqueous samples in microwells within a microwell array (paragraph 0021), and wherein the contents of the microwells are sealed with oil (paragraph 0094). Fathollahi et al. also teach the array comprises at least 100,000 wells (i.e., claims 2-3; paragraph 0009), and the methods have the added advantage of allowing automated high-throughput isolation of nucleic acids in microwell arrays (paragraph 0006). Thus, Fathollahi et al. teach the known techniques discussed above. In addition, it is noted that the courts have found each of the following: Changes in shape are obvious (In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966)). See MPEP 2144.04 IV B. Thus, any microwell shape is obvious. Any order of performing process steps is prima facie obvious in the absence of new or unexpected results (In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930); Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959)). See MPEP §2144.04 IV C. Thus, any order of loading aqueous process reagents and/or immiscible fluids is an obvious variant of the steps of the cited prior art. Where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (see In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); Titanium Metals Corp. of America v. Banner, 778 F2d 775. 227 USPQ 773 (Fed. Cir. 1985) (see MPEP 2144.05.01); and Where “the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 II. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art. Applicant is advised that MPEP 716.01(c) makes clear that “[t]he arguments of counsel cannot take the place of evidence in the record” (In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965)). Thus, Applicant should not merely rely upon counsel’s arguments in place of evidence in the record. It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of the cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantages of allowing quantitation of gene expression as explicitly taught by Hindson et al. (Abstract) and allowing automated high-throughput isolation of nucleic acids in microwell arrays as explicitly taught by Fathollahi et al. (paragraph 0006). In addition, it would have been obvious to the ordinary artisan that the known techniques of the cited prior art could have been combined with predictable results because the known techniques of the cited prior art predictably result in techniques useful for analyzing nucleic acids. Regarding claims 4-6, the method of claim 2 is discussed above. Hindson et al. teach the reagents include PCR primers (i.e., claim 4; paragraph 0157)) and probes (i.e., claim 5; paragraph 0066), as well as fluorescent probes (i.e., claim 6; paragraph 0181). Fathollahi et al. teach PCR reagents are added to the sample before placement in the microwells (i.e., claim 4; paragraph 0035) as well as fluorescent probes (i.e., claims 5-6; paragraph 0127). In addition, it is reiterated that the courts have found that any order of performing process steps is prima facie obvious in the absence of new or unexpected results. Thus, any order of loading the aqueous process reagents is an obvious variant of the steps of the cited prior art. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. Regarding claim 7, the method of claim 2 is discussed above. Hindson et al. teach adjusting pressure via an inlet and outlet to distribute liquid in the fluid pathway (paragraph 0083), as do Fathollahi et al. (paragraph 0066). Regarding claim 8, the method of claim 2 is discussed above. Hindson et al. teach the analyte is mRNA (paragraph 0007), as do Fathollahi et al. (paragraph 0101). Regarding claim 9, the method of claim 8 is discussed above. Hindon et al teach performing reverse transcription (paragraph 0180). Regarding claim 10, the method of claim 2 is discussed above. Hindson et al. teach the immiscible liquid is oil (paragraph 0082), as do Fathollahi et al. (paragraph 0094). Regarding claims 11-12, the method of claim 2 is discussed above. Hindson et al teach heating the array (i.e., claim 11) with a thermal control module, in the form of a thermally controlled plate (paragraph 0132), as well as thermocycling (i.e., claim 12; paragraph 0134). Fathollahi et al. also teach heating using a thermal cycler for PCR (i.e., claim 12; paragraph 0137), using heating elements (i.e., claim 11; paragraph 0127) to control the temperature. Regarding claims 13-15, the method of claim 2 is discussed above. Fathollahi et al. teach imaging fluorescence signals from the microwells (i.e., claim 14) and identifying the nucleic acid therein (i.e., claim 15; paragraph 0036), wherein the imaging is optical (paragraph 0137) and comprises illumination (i.e., claim 13; paragraph 0068). Regarding claim 16, the method of claim 2 is discussed above. Hindson et al. teach a section of the array contains control analytes as an alternative to the analytes (paragraph 0109). With respect to the placement of the control analytes, it is noted that the instant claims refer to “a” first portion of the wells, which is not necessarily the same as the first portion of the wells described in claim 2. In addition, the claim does not designate a specific geometric placement of any subset or portion of the wells. In addition, it is noted that the courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)). See MPEP §2144.04. Thus, any placement of the wells lacking the actual analyte (i.e., the target nucleic acid material) is obvious. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. Regarding claim 17, the method of claim 2 is discussed above. Hindson et al. teach the target nucleic acid material includes target DNA or RNA (paragraph 0007), as do Fathollahi et al. (paragraph 0006). Regarding claim 18, the method of claim 2 is discussed above. Hindson et al. teach the microwell volume is 50 microliters (paragraph 0085). Thus, it would have been obvious to have a sample volume of less than 50 microliters (i.e., so the wells will not overflow), which is in the claimed range. It is also reiterated that the courts have found that where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists, and that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. Therefore, the claimed ranges merely represent an obvious variant and/or routine optimization of the values of the cited prior art. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. Regarding claim 19, the method of claim 2 is discussed above. Fathollahi et al. teach the wells are in a close-packed hexagonal array (paragraph 0144). In addition, the courts have held that the rearrangement of parts within a device is obvious when the arrangement does not specifically modify the operation of the device (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)). See MPEP §2144.04. Thus any arrangement of the wells is obvious. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. Regarding claim 20, the method of claim 2 is discussed above. Hindon et al. also teach applying pressure to the substrate (paragraph 0083), as do Fathollahi et al. (paragraph 0066). Regarding claim 21, the method of claim 2 is discussed above. Hindson et al. teach heating the wells from 70oC to 37oC, which is in the claimed range. It is noted that the courts have held that optimization through routine experimentation, and in particular, when related to differences in temperature, do not support patentability (In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)). It is also reiterated that the courts have found that where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Thus, the claimed temperature range merely represents routine optimization and/or an obvious variant of the range taught by the cited prior art. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. 12. Claims 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014) and Fathollahi et al. (U.S. Patent Application Publication No. US 2018/0067038, published March 2018) as applied to claims 11 and 2 above, and further in view of Williams et al. (U.S. Patent Application Publication No. US 2016/0250640 A, published 1 September 2016). It is noted that while claims 12 and 18 are rejected as described above, the claims are also obvious using the interpretation outlined below. Regarding claims 12 and 18, the methods of claims 11 and 2 are discussed above in Section 11. Williams et al. teaches methods wherein nucleic acids are amplified via PCR (paragraph 0305) using a microfluidic network that has sample volumes of 20 microliters (i.e., claim 12; paragraph 0272). Williams et al. also teach thermal cycling using a heating unit that is part of a module (i.e., claim 18; paragraph 0564), and that the methods have the added advantage of allowing highly multiplexed detections (paragraph 0637). Thus, Williams et al. tach the known techniques discussed above. It is reiterated that the courts have found that where the claimed ranges overlap or lie inside the ranges disclosed by the prior art and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists. Thus, the claimed volume range merely represents routine optimization and/or an obvious variant of the range taught by the cited prior art. Applicant is again cautioned against merely relying upon counsel’s arguments in place of evidence in the record. It would therefore have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Williams et al. with the previously cited prior art to arrive at the instantly claimed methods with a reasonable expectation of success. The ordinary artisan would have been motivated to make the combination because said combination would have resulted in methods having the added advantage of allowing highly multiplexed detections as explicitly taught by Williams et al. (paragraph 0637). In addition, it would have been obvious to the ordinary artisan that the known techniques of Williams et al. could have been combined with the previously cited prior art with predictable results because the known techniques of Williams et al. predictably result in volumes and modules useful for analyzing nucleic acids. Double Patenting 13. 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. 14. Claims 2-12 and 16-21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-16, and 21-23 of copending Application No. 18/233,819 in view of Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014). Both sets of claims are drawn to distributing nucleic acid materials along fluid pathways to wells, immiscible liquids, hexagonal wells, pressure, transmitting heat, process reagents, illuminating and optically interrogating, 100,000 wells, applying pressure, etc. Any additional limitations of the ‘819 claims are encompassed by the open clam language “comprising” found in the instant claims. The ‘819 claims do not require water or subsets of wells. However, these limitations, as well as the rationale for combining, are taught by Hindson et al. as discussed above. This is a provisional nonstatutory double patenting rejection. 15. Claims 13-15 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-16, and 21-23 of copending Application No. 18/233,819 in view of Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014) as applied to claim 1 above, and further in view of Fathollahi et al. (U.S. Patent Application Publication No. US 2018/0067038, published March 2018). It is noted that while claim 19 is rejected as described above, the claim is also obvious using the interpretation outlined below. Regarding claims 12 and 18, the methods of claims 11 and 2 are discussed above. Neither the ‘819 claims not Hindson et al. discuss imaging or hexagonal close-packing. However, these limitations, as well as the rationale for combining, are taught by Hindson et al. as discussed above. This is a provisional nonstatutory double patenting rejection. 16. Claims 12 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-16, and 21-23 of copending Application No. 18/233,819 in view of Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014) as applied to claims 11 and 2 above, and further in view of Williams et al. (U.S. Patent Application Publication No. US 2016/0250640 A, published 1 September 2016) based on the citations and rationale provided above. This is a provisional nonstatutory double patenting rejection. 17. Claims 2-4 and 7-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,866,766. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are drawn to distributing nucleic acid materials along fluid pathways to wells, immiscible liquids, hexagonal wells, pressure, transmitting heat, process reagents, illuminating and optically interrogating, 100,000 wells, applying pressure, etc. Any additional limitations of the ‘766 claims are encompassed by the open clam language “comprising” found in the instant claims. 18. Claims 5-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,866,766 as applied to claim 1 above, and further in view of Hindson et al. (U.S. Patent Application No. US 2014/0155295 A1, published 5 June 2014) or Fathollahi et al. (U.S. Patent Application Publication No. US 2018/0067038, published March 2018). Regarding claims 5-6, the method of claim 1 is discussed above. The ‘766 claims do not require fluorescent probes that hybridized to the target nucleic acid material. However, these limitations, as well as the rationale for combining, are taught by both Hindson et al. or, alternatively, Fathollahi et al. as discussed above. Conclusion 19. No claim is allowed. 20. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Gussow can be reached at 571-272-6047. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. Robert T. Crow Primary Examiner Art Unit 1683 /Robert T. Crow/Primary Examiner, Art Unit 1683 /ANNE M. GUSSOW/Supervisory Patent Examiner, Art Unit 1683
Read full office action

Prosecution Timeline

Sep 06, 2023
Application Filed
Apr 08, 2024
Response after Non-Final Action
Jul 28, 2026
Non-Final Rejection mailed — §103, §112, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12135323
Serially Deposited Biomolecules
4y 8m to grant Granted Nov 05, 2024
Patent 12134098
MICRODROPLET MANIPULATION METHOD
2y 0m to grant Granted Nov 05, 2024
Patent 12129518
METHOD FOR NANOPORE RNA CHARACTERISATION
3y 6m to grant Granted Oct 29, 2024
Patent 12128403
FLUID DELIVERY METHODS
2y 3m to grant Granted Oct 29, 2024
Patent 12116629
METHODS AND COMPOSITIONS FOR REDUCING NUCLEOTIDE IMPURITIES
1y 6m to grant Granted Oct 15, 2024
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
42%
Grant Probability
74%
With Interview (+32.1%)
3y 11m (~1y 0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 715 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month