DETAILED CORRESPONDENCE
Summary
This is the initial Office Action based on the Minami, et al. application filed with the Office on 23 June 2023.
Claims 1-14 are currently pending and have been fully considered. Claims 1 and 12 are independent.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The instant application is the US National Stage Patent Application of an International Patent Application, PCT/JP2021/046993, filed on 20 December 2021, which claims priority to a Japanese Patent Application, JP 2021-001818, filed on 8 January 2021. Thus, 8 January 2021, is the effective filing date of the present application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted regarding the present application filed on 23 June 2023, is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the Examiner.
Drawings
The drawing are deemed acceptable.
Claim Interpretation
In claim 3, certain limitations are claimed as “optionally”. Such limitations are treated as not positively recited limitations, given that they are optional, rather than mandatory.
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.
Claim 12 and 13 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.
Instant claim 12 claims the “[u]se of an organic compound containing a carboxy group and a thiol group as a transistor-based polyamine sensor”. However, no details are recited as to how to use the claimed organic compound as it relates to a transistor-based polyamine sensing. Therefore, the claim fails to particularly point out and distinctly claim the subject matter regarded as the invention, as thus is indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986).
Claim 13 recites the limitation "identifying the polyamine by". There is insufficient antecedent basis for this limitation in the claim.
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)(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.
Claims 1 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a published paper submitted by Applicant on an IDS, by T. Minamiki, et al. (“Label-Free Direct Electrical Detection of a Histidine-Rich Protein with Sub-Femtomolar Sensitivity using an Organic Field-Effect Transistor”, Chemistry Open Communications, 6(4): p. 472-475, August 2017; hereinafter, “Minamiki”).
Regarding claim 1, Minamiki discloses a transistor-based polyamine sensor comprising a detection site (Abstract),
wherein an organic compound containing a carboxy group and a thiol group is immobilized on all or part of the surface of the detection site via the thiol group of the organic compound (as:
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,
Figure 1);
a heavy metal ion is bound to the carboxy group of the organic compound (nickel ion shown in Figure 1); and
a change in threshold voltage caused by bonding of the heavy metal ion to a polyamine is measured to detect the polyamine (VTH as shown in Formula 1, p. 474; the resultant “… detection signal of proteins was quantified from changes in the drain current in the output characteristics (IDS – VDS).”, Electrical Detection of Proteins, p. 474).
Regarding claim 8, the polyamine is the target analyte, and is not an element of the claimed transistor-based polyamine sensor. Therefore, claim 8 does not further limit the claimed transistor-based polyamine sensor, rather it only recites various particular polyamine compounds as the target analyte.
Regarding claim 9, Minamiki teaches the heavy metal ion is a divalent nickel ion (as shown in Figure 1).
Regarding claim 10, Minamiki teaches an organic field-effect transistor (OFET; Abstract).
Regarding claim 11, Minamiki teaches the transistor-based polyamine sensor in contact with a sample containing a polyamine (as:
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, Figure 3).
Regarding claim 12, Minamiki discloses using an organic compound containing a carboxy group and a thiol group as a transistor-based polyamine sensor, as shown in the following reproduced Figures:
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(Figure 1)
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(Figure 3).
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.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Minamiki in view of a published paper by L. Bian, et al. (“Machine-Learning Identification of the Sensing Descriptors Relevant in Molecular Interactions with Metal Nanoparticle-Decorated Nanotube Field-Effect Transistors”, ACS Applied Materials & Interfaces, 11(1): p. 1219-1227, Dec 2018; hereinafter, “Bian”).
Regarding claim 13, Minamiki teaches the limitations of instant claim 11, as outlined above.
Minamiki does not teach creating a model that has undergone pattern learning by linear discriminant analysis, based on data on a change in transmission characteristics of a transistor-based polyamine sensor and identifying the polyamine by pattern recognition.
However, Bian discloses the utilization of linear discriminant analysis of field-effect transistor-based sensor for identification purposes (2nd ¶, Introduction, p. 1219-1220).
At the time of the filing of the present application, it would have been obvious to one of ordinary skill in the art to have adapted the utilization of linear discriminant analysis pattern recognition of analytes, as laid forth by Bian, to the utilization method of transistor-based polyamine sensing disclosed by Minamiki as it would provide enhance discrimination of specific analytes leading to better sensor arrays designs and improve feature extraction toward fully automated measurements (Bian, 2nd ¶, Introduction, p. 1219-1220).
Regarding claim 14, Minamiki teaches the limitations of instant claim 11, as outlined above.
Minamiki does not teach measuring the concentration of a polyamine to be measured in the presence of an impurity other than the polyamine to be measured, by using a support vector machine, based on data on a change in transmission characteristics of a transistor-based polyamine sensor.
However, Bian discloses utilization of support vector machine model for the determination of analyte and classification (8th ¶, Results and Discussion, p. 1224), wherein distinguishing between related compounds was achieved (9th ¶, Results and Discussion, p. 1224).
At the time of the filing of the present application, it would have been obvious to one of ordinary skill in the art to have adapted the utilization of support vector machine modeling, as laid forth by Bian, to the utilization method of transistor-based polyamine sensing disclosed by Minamiki as it would provide an accurate means of determining analytes while using significantly a fewer number of features for detection (Bian, 8th ¶, Results and Discussion, p. 1224).
Allowable Subject Matter
Claims 2-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The Minamiki reference is considered the closest prior art to the instant claims. However, Minamiki does not teach or suggest an organic compound having monocyclic heterocycle containing at least one member selected from a nitrogen atom, a sulfur atom or an oxygen atom, as required by instant claim 2. Additionally, Minamiki does not teach or suggest the organic compound is an organic compound having a formula of:
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wherein A1 represents an aromatic hydrocarbon group, an aliphatic hydrocarbon group having 1 to 10 carbon atoms, or a monocyclic heterocyclic group containing at least one member selected from the group consisting of a nitrogen atom, a sulfur atom, and an oxygen atom; R1 represents an optionally substituted alkylene group having 1 to 10 carbon atoms, R2 represents a single bond or an optionally substituted alkylene group having 1 to 10 carbon atoms; p is 0 or 1; when p is 1, R3 represents a hydrogen atom or an alkyl group having 1 to 10 carbon atoms; and m is 0 or 1, as required by instant claims 3-7. Therefore, the indicated claims contain allowable subject matter.
Interview with the Examiner
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The Automated Interview Request form (AIR) is available to request an interview to be scheduled with the Examiner. First, an authorization for internet communications regarding the case should be filed prior or with an AIR online request.
The internet communication authorization form (SB/0439), which authorizes or withdraws authorization for internet-based communication (e.g., video conferencing, email, etc.) for the application must be signed by the applicant or the attorney/agent for applicant. The form can be found at:
https://www.uspto.gov/sites/default/files/documents/sb0439.pdf
The AIR form can be filled out online, and is automatically forwarded to the Examiner, who will call to confirm a requested time and date, or set up a mutually convenient time for the interview. The form can be found at:
https://www.uspto.gov/patent/uspto-automated-interview-request-air-form.html
The Examiner encourages, but does not require, interviews by the USPTO Microsoft Teams video conferencing. This system allows for file-sharing along audio conferencing. Microsoft Teams can be used as an internet browser add-on in Microsoft IE, Google Chrome, or Mozilla Foxfire, or as a temporary Java-based application on these browsers. Steps for joining an Examiner setup Microsoft Teams can be found at the USPTO website:
https://www.uspto.gov/patents/laws/interview-practice#step3
Additionally, a blank email to the Examiner at the time of a telephonic interview can be used for a reply to easily allow for Microsoft Teams communication. Please note, policy guidelines regarding Internet communications are detailed at MPEP §500-502.3, and office policy regarding interviews are detailed at MPEP §713.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN C BALL whose telephone number is (571)270-5119. The examiner can normally be reached M - F, 9 am - 5:30 pm.
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.
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/J. Christopher Ball/ Primary Examiner, Art Unit 1795
7 November 2025