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 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.
1. Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2014/0302562 to Burroughs.
Burroughs teaches a microplate for polymerase chain reaction (PCR), comprising a substrate formed of a material that is susceptible to heating PCR samples upon the application of an electromagnetic field and/or electromagnetic energy to said substrate. (Abstract).
As shown in Fig. 1 wells 101 have a metal plate (“sheet”) attached to the bottoms thereof.
The metal plate (“sheet”) and be made from aluminum, iron, nickel, cobalt, copper, steel, gold, silver, platinum, or combinations thereof ([0089]) which applicant discloses have a relative magnet permeability no greater than 1.01 in paragraph [0051].
Burroughs teaches using a magnetic field to induce heating of the metal plate (“sheet”)
The limitation in claim 1 that the resistive sheet “is to receive a signal from a signal source to cause the resistive sheet to generate heat to form a pulse-controlled amplification, thermal cycling zone in close thermal proximity to the bottom,” only recites intended use and does not incorporate any structural limitations into the claims.
I.) As noted above, Burroughs teaches all the limitations of claim 1.
Therefore, Burroughs anticipates claim 1.
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.
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.
2. Claim 2 is rejected under 35 USC 103 as being unpatentable over Burroughs in view of U.S. Patent Application Publication No. 2013/0101983 to Chandra et al. and Kloeckner Metals (https://www.kloecknermetals.com/blog/a-quick-guide-to-annealing-what-is-annealed-metal/, 06/30/2020).
I.) Regarding applicant’s claim 2, as noted above Burroughs anticipates claim 1 from which claim 2 depends.
Claim 2 recites that a first material of the resistive sheet is annealed stainless steel.
Burroughs teaches steel, but not annealed stainless steel.
Chandra et al. teaches an inductive heater provided on the bottom of a PCR system 1 PDMS chip that can be made of stainless steel. [0028], [0062] and [0062]
Kloeckner Metals teaches that annealing metals increases ductability and reduces hardness.
It would have been obvious to one of ordinary skill in the art to modify Burroughs to use stainless steel as taught by Chandra et al. for its known use of inductive heating and to use annealed stainless steel as taught by Klockner Metals to improve the workability of the stainless steel.
Therefore, Burroughs in view of Chandra et al. and Kloeckner Metals renders claim 2 obvious.
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.
3. Claims 1-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/292,245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because.
Claim 7 of copending Application No. 18/292,245 encompasses all the limitations of claim 1 together with the additional recitation of transparent carrier layer.
Claim 7 of copending Application No. 18/292,245 encompasses all the limitations of claim 5 together with the additional recitation of transparent carrier layer.
The additional recitation in claim 5 that the relative magnetic permeability of the resistive sheet is to maintain the thermal, cycling zone to exhibit a substantially uniform temperature across an area defined by the resistive sheet of the bottom within the at least one well does not incorporate any additional structural limitations into claim 5 beyond the structural limitations found in claim 1.
Claim 9 copending Application No. 18/292,245 encompasses all the limitations of claim 1 together with the additional recitation of transparent carrier layer, first and second magnetic force arrays and an optical detector.
Claim 9 of copending Application No. 18/292,245 encompasses all the limitations of claim 5 together with the additional recitation of transparent carrier layer.
The additional recitation in claim 5 that the relative magnetic permeability of the resistive sheet is to maintain the thermal, cycling zone to exhibit a substantially uniform temperature across an area defined by the resistive sheet of the bottom within the at least one well does not incorporate any additional structural limitations into claim 5 beyond the structural limitations found in claim 1.
Claims 2, 4 and 6-8 are rejected as depending from claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4. Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/292,245 in view of Burroughs.
Claim 7 of copending Application No. 18/292,245 encompasses all the limitations of claim 1 except for teaching that the resistive sheet is made from stainless steel.
As noted above, Burroughs teaches a microplate for polymerase chain reaction (PCR), comprising a substrate formed of a material that is susceptible to heating PCR samples upon the application of an electromagnetic field and/or electromagnetic energy to said substrate. (Abstract).
As shown in Fig. 1 wells 101 have a metal plate (“sheet”) attached to the bottoms thereof.
The metal plate (“sheet”) and be made from aluminum, iron, nickel, cobalt, copper, steel, gold, silver, platinum, or combinations thereof ([0089]) which applicant discloses have a relative magnet permeability no greater than 1.01 in paragraph [0051].
Burroughs teaches using a magnetic field to induce heating of the metal plate (“sheet”)
It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to modify claim 7 of copending Application No. 18/292,245 to make the resistive sheet from stainless steel as taught by Burroughs for its know use in indictive heating.
The limitation in claim 1 that the resistive sheet “is to receive a signal from a signal source to cause the resistive sheet to generate heat to form a pulse-controlled amplification, thermal cycling zone in close thermal proximity to the bottom,” only recites intended use and does not incorporate any structural limitations into the claims.
Therefore, claim 7 of copending Application No. 18/292,245 in view of Burroughs renders claim 1 obvious.
5. Claims 2 and 3 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/292,245 in view of Burroughs, Chandre at al. and Kloeckner Metals
Claim 7 of copending Application No. 18/292,245 encompasses all the limitations of claim 2 except for teaching that the resistive sheet is made from annealed stainless steel.
As noted above, Burroughs teaches a microplate for polymerase chain reaction (PCR), comprising a substrate formed of a material that is susceptible to heating PCR samples upon the application of an electromagnetic field and/or electromagnetic energy to said substrate. (Abstract).
As shown in Fig. 1 wells 101 have a metal plate (“sheet”) attached to the bottoms thereof.
The metal plate (“sheet”) and be made from aluminum, iron, nickel, cobalt, copper, steel, gold, silver, platinum, or combinations thereof ([0089]) which applicant discloses have a relative magnet permeability no greater than 1.01 in paragraph [0051].
As further noted above, Chandra et al. teaches an inductive heater provided on the bottom of a PCR system 1 PDMS chip that can be made of stainless steel. [0028], [0062] and [0062]
Kloeckner Metals teaches that annealing metals increases ductability and reduces hardness.
It would have been obvious to one of ordinary skill in the art to modify claim 7 of copending Application No. 18/292,245 to use steel as the resistive sheet as taught by Burroughs and to use stainless steel as taught by Chandra et al. for its known use of inductive heating and to use annealed stainless steel as taught by Klockner Metals to improve the workability of the stainless steel.
Therefore, claim 7 of copending Application No. 18/292,245 in view of Burroughs, Chandra et al. and Kloeckner Metals renders claim 2 obvious.
Claim 3 is obvious inasmuch as it depends from claim 2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL S. GZYBOWSKI whose telephone number is (571)270-3487. The examiner can normally be reached M-F 8:30-5:00.
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/MICHAEL STANLEY GZYBOWSKI/Examiner, Art Unit 1798
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