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 .
Election/Restrictions
2. Applicant argues (Remarks p. 9) that the Office replaces Goledzinowski with Zhang and ExSTA. This is incorrect. The a posteriori lack-of-unity determination in the 05/18/2026 Office action relied on Mohammed alone. Mohammed was cited in response to Applicant’s traversal filed on 04/22/2026.
Applicant relies on a “well-based” workflow, “pre-filled plate architecture”, “acoustic sampling”, and “drying or sealing the prepared wells” (Remarks p. 10). None of these is common to Groups I and II. Independent claims 1 and 12 recite none of them. Features that only one group recites cannot be a shared special technical feature. The technical features the groups do share are combining a portion of a sample with a spike of the analyte for a standard-addition determination of the analyte concentration based on a fitted curve. Mohammed discloses the shared technical feature. The shared features therefore make no contribution over the prior art.
The groups of inventions did not change. After an unpersuasive traversal, it is proper to address the traversal and make the requirement final (MPEP 821.01).
The requirement is still deemed proper and remains FINAL.
Response to Amendment
3. Applicant’s amendments, filed 5 August 2026, with respect to the objections of the specification and claims 4 and 12 have been entered. The objections of the specification and claims 4 and 12 have been withdrawn.
Response to Arguments
4. Applicant’s arguments, filed 5 August 2026, with respect to the rejection of the claims under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered but they are not persuasive for the reasons set forth below.
5. Applicant argues that Mohammed’s proposed ExSTA method does not generate a standard-addition curve from differently spiked portions of the unknown sample (Remarks pg. 11). The argument is not persuasive. The rejection of claims 1 and 12 relies on Mohammed’s internal NAT-addition embodiment (fig. 1B), not on the ExSTA embodiment (fig. 1C). Every limitation of claims 1 and 12 was mapped to the single embodiment of internal NAT-addition. The Office did not assemble the claimed arrangement from Mohammed’s distinct internal and external calibration discussions (Remarks p. 12).
6. Applicant argues that Mohammed does not disclose sampling one or more droplets from the respective sample portions for mass analysis as required by claims 1 and 12 (Remarks p. 12). The argument is not persuasive. Claims are given their broadest reasonable interpretation consistent with the specification. Claims 1 and 12 do not recite how the droplets are sampled, what volume they have, or that the droplets are ejected. The instant specification describes droplet sampling broadly ([0022] teaches that other types of high analysis throughput systems can also be used where sample liquids (e.g., droplets) from wells in a well plate are sampled. Examples include: aspirating sample using one or more pipettes. [0024] teaches that materials such as droplets may be sampled using other sampling devices such as a needle or an aspirating device (e.g., a syringe)). According to the instant specification, sampling one or more droplets therefore covers withdrawing a discrete volume of liquid sample with a needle or aspirating device. Mohammed discloses autosampler injection of each separately prepared sample (p. 7 section 2.6 teaches the autosampler. P. 4 teaches a minimum of 18 injections). An autosampler injection withdraws a discrete volume of the liquid sample from its container.
7. Applicant argues that Zhang does not teach dividing an unknown sample into differently spiked portions (Remarks p. 12). This is not persuasive. Nonobviousness cannot be shown that way when the rejection rests on a combination. Mohammed supplies the sample-specific standard addition. Zhang is relied upon for droplet ejection, sampling from separate wells, and sampling rate.
8. Applicant argues that combining Zhang’s faster sampling platform with Mohammed’s proposed ExSTA method would therefore lead most directly to faster single-point analysis using an external calibration curve, not to the claimed sample-specific workflow (Remarks p. 12). This is not persuasive. The rejection modifies Mohammed’s internal NAT-addition embodiment, not ExSTA. Mohammed attributes the impracticality of internal NAT-addition only to analysis time and sample consumption (p. 2 teaches that it requires multiple analyses of each sample, which makes it impractical for LC/MS-based analyses of large numbers of research or clinical samples due to time and/or sample limitations. P. 2 further teaches that internal NAT-addition method has been used because of the speed and low sample requirements of this technique). Mohammed thus shows that those skilled in the art paired standard addition with fast, low-volume sample introduction to overcome these limitations. Zhang then provides a fast, low volume sample introduction. Because the combination addresses the drawbacks Mohammed identifies, one of ordinary skill in the art would have been motivated to implement Mohammed’s internal NAT-addition method with Zhang’s droplet sampling.
9. Applicant argues that neither refence suggests abandoning Mohammed’s proposed external method, returning to the internal NAT-addition method that Mohammed identifies as impractical for high-throughput use. The argument is not persuasive. Drawbacks are tradeoffs, not a teaching away. ‘[a] given course of action often has simultaneous advantages and disadvantages, and this does not necessarily obviate motivation to combine.’" (quoting Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165, 77 USPQ2d 1865, 1870 (Fed Cir. 2006) (MPEP 2141.02(VI)). In the same sentence that lists the drawbacks, Mohammed calls the method the best approach for generating a standard curve (p. 13). Mohammed then calls internal standard-addition method as gold standard and that the method outperforms the other two in precision and accuracy (p. 2 clinical relevance). Mohammed thus presents a tradeoff between accuracy on one side and sample, cost and time on the other. It does not discredit the method.
10. Applicant argues that a general desire to increase throughput does not explain why the references would have been combined in the arrangement recited by the claims. The argument is not persuasive. The rationale is not a generic desire for speed. It is a solution for the drawbacks that Mohammed attributes to the internal NAT-addition method. A reasonable expectation of success is shown by Zhang’s quantitative performance (matrix tolerance tests as shown by fig. 2. Quantitation of peptides and antibodies shown in figs. S5-S6, which are the same analyte class as Mohammed’s peptides).
Claim Rejections - 35 USC § 102
5. 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.
6. Claims 1-6, 8, 12, 14-17 are rejected under 35 U.S.C 102(a)(1) as being anticipated by Mohammed, Yassene, et al. "ExSTA: External Standard Addition Method for Accurate High-Throughput Quantitation in Targeted Proteomics Experiments." Proteomics – Clinical Applications, vol. 12, no. 2, 2018, p. 1600180 [hereinafter referred to as Mohammed]. [Note: reference was supplied in previous correspondence].
7. Regarding claim 1:
Mohammed discloses a method for measuring a concentration of an analyte in a sample (pg. 1 teaches a method for analyte concentration measurement), the method comprising:
sampling a first one or more droplets for mass analysis, wherein the first one or more droplets include the sample (under broadest reasonable interpretation, a droplet is interpreted to be a small volume of sample. Pg. 4 teaches injections of the sample. Injections from Level A as shown in fig. 1B correspond to a first one or more droplets. Pg. 5 teaches that LC/MRM-MS experiments were performed);
performing mass analysis on the first one or more droplets to determine a first intensity of an analyte in the first one or more droplets (pg. 3 fig. 1B teaches peak detection and integration, which corresponds to intensity of an analyte. Sampling from Level A (NAT=0) corresponds to the first one or more droplets. Pg. 7 teaches LC/MRM-MS experiments were performed as mass analysis);
sampling a second one or more droplets for mass analysis, wherein the second one or more droplets include the sample and a first spike of the analyte (pg. 2 teaches successive additions of the target analyte are made into each sample. Fig. 1B Level B teaches increasing NAT concentration. Sampling from Level B corresponds to the second one or more droplets that include the sample and a first spike of the analyte);
performing mass analysis on the second one or more droplets to determine a second intensity of the analyte in the second one or more droplets (pg. 2 teaches measuring the increasing responses resulting from the increased amount of the analyte in the sample. Pg. 3 fig. 1B teaches peak detection and integration, where Level B corresponds to a second intensity of the analyte in the second one or more droplets. Pg. 7 teaches LC/MRM-MS experiments were performed);
fitting a curve to the first intensity and the second intensity (pg. 2 teaches a straight line fitting the data points is determined); and
based on the fitted curve, calculating an analyte concentration for the sample (pg. 2 teaches that the END (endogenous) concentration can be determined by the extrapolation of the regression line to the x-intercept. The x-axis corresponds to the amount of analyte added as shown in fig. 1B).
8. Regarding claim 2:
Mohammed discloses the method of claim 1. Mohammed further discloses that wherein the curve is a line (pg. 2 teaches that a straight line fitting the data points is determined by linear regression).
9. Regarding claim 3:
Mohammed discloses the method of claim 1. Mohammed further discloses that wherein fitting the curve (pg. 2 teaches that a straight line fitting the data points is determined by linear regression) comprises:
plotting the first intensity and the second intensity on a plot having an x-axis based on concentration of the analyte and a y-axis based on measured intensity (pg. 3 teaches that the standard curve is generated by plotting the relative response as a function of the spiked-in NAT peptide concentration with different data points corresponding to the first intensity and the second intensity. fig. 1B teaches x-axis as spiked-in NAT concentrations and y-axis as relative responses, which corresponds to measured intensity); and performing a regression to fit the curve to the plotted first intensity and the plotted second intensity (pg. 3 teaches that the END concentration can be determined by the extrapolation of the regression line to the x-intercept).
10. Regarding claim 4:
Mohammed discloses the method of claim 3. Mohammed further discloses that wherein calculating the analyte concentration for the sample incudes determining an x-axis intercept of the fitted curve (pg. 3 teaches that the END (endogenous) concentration can be determined by the extrapolation of the regression line to the x-intercept).
11. Regarding claim 5:
Mohammed discloses the method of claim 3. Mohammed further discloses that wherein the x-axis represents added concentration and the y-axis represents the measured intensity (pg. 3 teaches that the standard curve is generated by plotting the relative response as a function of the spiked-in NAT peptide concentration. Fig. 1B teaches x-axis as spiked-in NAT concentrations and y-axis as relative responses, which corresponds to measured intensity).
12. Regarding claim 6:
Mohammed discloses the method of claim 1.
Mohammed further discloses sampling a third one or more droplets for mass analysis, wherein the third one or more droplets include the sample and a second spike of the analyte, wherein the second spike has a higher concentration of analyte than a concentration of the first spike; performing mass analysis on the third one or more droplets to determine a third intensity of the analyte in the third one or more droplets; and wherein the curve is further fitted to the third intensity (pg. 3 fig. 1B teaches Level C with increasing NAT concentration. Pg.2 teaches successive additions of the target analyte are made into each sample. Further additions in Level C correspond to a third one or more droplets. The second addition has a higher concentration than the first addition. The curve is fitted to the third intensity as shown in fig. 1B. Pg. 7 teaches LC/MRM-MS experiments were performed).
13. Regarding claim 8:
Mohammed discloses the method of claim 1. Mohammed further discloses that wherein the first one or more droplets include a zero-concentration spike (pg. 3 fig. 1B teaches peak detection and integration, which corresponds to a first intensity of an analyte. Level A (NAT=0) corresponds to the first one or more droplets that include a zero-concentration spike. Pg. 7 teaches LC/MRM-MS experiments were performed as mass analysis).
14. Regarding claim 12:
Mohammed discloses a method for measuring a concentration of an analyte in a sample (pg. 1 teaches a method for analyte concentration measurement), the method comprising:
dividing a sample into three equal parts to produce a first sample, a second sample, and a third sample (pg. 7 teaches that the six standard samples were prepared by combining aliquots of the plasma tryptic digest (200 μL, containing 1.8 μL of original undiluted plasma) with the SIS peptide mixture or the SIS-NAT mixture (98 μL) and then the adding 202 μL of 1% FA to each standard);
adding a first spike of the analyte to the second sample, wherein the first spike has a first analyte concentration (pg.2 teaches successive additions of the target analyte are made into each sample. Fig. 1B Level B teaches increasing NAT concentration, corresponding to the second sample that includes a first spike of the analyte);
adding a second spike of the analyte to the third sample, wherein the second spike has a second analyte concentration that is greater than the first analyte concentration (pg. 3 fig. 1B teaches Level C with increasing NAT concentration, which corresponds to the third sample with a second spike. Pg.2 teaches successive additions of the target analyte are made into each sample. The second addition of analyte has a higher concentration than the first addition of the analyte);
sampling a first one or more droplets from the first sample; performing a mass analysis on the first one or more droplets to determine a first analyte intensity of the first one or more droplets (pg. 3 fig. 1B teaches peak detection and integration, which corresponds to intensity of an analyte. Sampling from Level A (NAT=0) corresponds to the first one or more droplets. Pg. 7 teaches LC/MRM-MS experiments were performed as mass analysis);
sampling a second one or more droplets from the second sample; performing a mass analysis on the second one or more droplets to determine a second analyte intensity of the second one or more droplets (pg. 2 teaches successive additions of the target analyte are made into each sample. Fig. 1B Level B teaches increasing NAT concentration. pg. 3 fig. 1B teaches peak detection and integration, which corresponds to intensity of an analyte. Sampling from Level B corresponds to the second one or more droplets);
sampling a third one or more droplets from the third sample; performing a mass analysis on the third one or more droplets to determine a third analyte intensity of the third one or more droplets (pg. 3 fig. 1B teaches Level C with increasing NAT concentration. pg.2 teaches successive additions of the target analyte are made into each sample. Further additions in Level C correspond to a third one or more droplets. Pg. 3 fig. 1B teaches peak detection and integration, which corresponds to intensity of an analyte);
plotting the first analyte intensity, the second analyte intensity, and the third analyte intensity on a plot having an x-axis of based on concentration of the analyte and a y-axis based on measured intensity (pg. 3 teaches that the standard curve is generated by plotting the relative response as a function of the spiked-in NAT peptide concentration with different data points corresponding to the first, second, and third analyte intensity. Fig. 1B teaches x-axis as spiked-in NAT concentrations and y-axis as relative responses, which corresponds to measured intensity);
performing a regression to fit a curve to the plotted first analyte intensity, the second analyte intensity, and the third analyte intensity (pg. 3 teaches that the END concentration can be determined by the extrapolation of the regression line to the x-intercept); and
calculating an analyte concentration for the sample by determining an x-axis intercept of the fitted curve (pg. 3 teaches that the END (endogenous) concentration can be determined by the extrapolation of the regression line to the x-intercept).
15. Regarding claim 14:
Mohammed discloses the method of claim 12. Mohammed further discloses that wherein the curve is a line (pg. 2 teaches that a straight line fitting the data points is determined by linear regression).
16. Regarding claim 15:
Mohammed discloses the method of claim 12. Mohammed further discloses that wherein the x-axis represents added concentration and the y-axis represents the measured intensity (pg. 3 teaches that the standard curve is generated by plotting the relative response as a function of the spiked-in NAT peptide concentration. Fig. 1B teaches x-axis as spiked-in NAT concentrations and y-axis as relative responses, which corresponds to measured intensity).
17. Regarding claim 16:
Mohammed discloses the method of claim 12. Mohammed further discloses that wherein the first spike and the second spike have the same volume (pg. 7 teaches that the six standard samples were prepared by combining aliquots of the plasma tryptic digest (200 μL, containing 1.8 μL of original undiluted plasma) with the SIS peptide mixture or the SIS-NAT mixture (98 μL), which corresponds to the same volume of the first and second spike, and then the adding 202 μL of 1% FA to each standard).
18. Regarding claim 17:
Mohammed discloses the method of claim 16. Mohammed further discloses adding a zero-concentration spike to the first sample (pg. 7 teaches that the level A sample was preprared without adding any NAT. Fig. 1B teaches Level A (NAT=0)) such that the first sample, second sample, and third sample include the same volume of liquid (pg. 7 teaches that the six standard samples were prepared by combining aliquots of the plasma tryptic digest (200 μL, containing 1.8 μL of original undiluted plasma) with the SIS peptide mixture or the SIS-NAT mixture (98 μL), and then the adding 202 μL of 1% FA to each standard. In total, the samples have the same volume of liquid).
Claim Rejections - 35 USC § 103
19. 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.
20. 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.
21. Claims 7, 9-10, 13 are rejected under 35 U.S.C 103 as being unpatentable over Mohammed in view of Zhang, Hui, et al. "Acoustic Ejection Mass Spectrometry for High-Throughput Analysis." bioRxiv, 2020, doi:10.1101/2020.01.28.923938 [hereinafter referred to as Zhang]. [Note: reference was supplied in previous correspondence].
22. Regarding claim 7:
Mohammed discloses the method of claim 6. Mohammed further discloses separate samples that each have the same volume of combined liquid (pg. 7 teaches that the six standard samples were prepared by combining aliquots of the plasma tryptic digest (200 μL, containing 1.8 μL of original undiluted plasma) with the SIS peptide mixture or the SIS-NAT mixture (98 μL) and then the adding 202 μL of 1% FA to each standard. In total, the samples have the same volume of liquid).
Mohammed fails to disclose that wherein the sampling comprises ejecting the droplets from separate sample wells that each have the same volume of combined liquid.
Zhang teaches that wherein the sampling comprises ejecting the droplets from separate sample wells (pg. 4 teaches that at each sampling event a droplet was ejected from the 40 μL microplate well reaction volume. Pg. 19 teaches sequential ejection from individual wells).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Mohammed in view of Zhang to include that wherein the sampling comprises ejecting the droplets from separate sample wells that each have the same volume of combined liquid. Such modification would allow for delivering nanoliter droplets in a touchless manner with high speed, precision, and accuracy (as taught in Zhang pg. 1).
23. Regarding claim 9:
Mohammed discloses the method of claim 1. Mohammed fails to disclose that wherein the sampling of the second one or more droplets occurs within 2 seconds after sampling of the first one or more droplets.
However, Zhang teaches that wherein the sampling of the second one or more droplets occurs within 2 seconds after sampling of the first one or more droplets (fig. 1(B) teaches 2Hz sampling rate, which is within 2 seconds from one sampling to the next. Pg. 4 teaches that at each sampling event a droplet was ejected from the 40 μL microplate well reaction volume. Pg. 19 teaches sequential ejection from individual wells. The first one or more and second one or more droplets correspond to droplets in individual wells).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Mohammed in view of Zhang to include that wherein the sampling of the second one or more droplets occurs within 2 seconds after sampling of the first one or more droplets. Such modification would allow for a transformative system enabling high-speed sampling and increasing mass spectrometry utility via sub-second speed and non-contact sampling (as taught in Zhang pg. 1).
24. Regarding claim 10:
Mohammed discloses the method of claim 6. Mohammed fails to disclose that wherein the sampling of the first one or more droplets and the second one or more droplets and the third one or more droplets is performed by ejecting droplets from liquid samples.
However, Zhang teaches that wherein the sampling of the first one or more droplets and the second one or more droplets and the third one or more droplets is performed by ejecting droplets from liquid samples (pg. 4 teaches that at each sampling event a droplet was ejected from the 40 μL microplate well reaction volume. Pg. 19 teaches sequential ejection from individual wells. Fig. 1(A) shows four microplates, where droplets ejected from the individual wells correspond to the first one or more, second one or more, and third one or more droplets).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Mohammed in view of Zhang to include that wherein the sampling of the first one or more droplets and the second one or more droplets and the third one or more droplets is performed by ejecting droplets from liquid samples. Such modification would allow for delivering nanoliter droplets in a touchless manner with high speed, precision, and accuracy (as taught in Zhang pg. 1).
25. Regarding claim 13:
Mohammed discloses the method of claim 12. Mohammed fails to disclose that wherein the sampling of the first one or more droplets, the second one or more droplets, and the third one or more droplets is performed by acoustic ejection.
However, Zhang teaches that wherein the sampling of the first one or more droplets, the second one or more droplets, and the third one or more droplets is performed by acoustic ejection (pg. 4 teaches that at each sampling event a droplet was ejected from the 40 μL microplate well reaction volume. Pg. 19 teaches sequential ejection from individual wells. Pg. 9 teaches a pulse of acoustic energy ejects sample droplets. Fig. 1(A) shows four microplates, where droplets ejected from the individual wells correspond to the first one or more, second one or more, and third one or more droplets ).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to have modified Mohammed in view of Zhang to include that wherein the sampling of the first one or more droplets, the second one or more droplets, and the third one or more droplets is performed by acoustic ejection. Such modification would allow for delivering nanoliter droplets in a touchless manner with high speed, precision, and accuracy (as taught in Zhang pg. 1).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY LI whose telephone number is (571) 272-5043. The examiner can normally be reached 8:30am-4:30pm. 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, Robert Kim can be reached at (571) 272-2293. 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.
/LARRY LI/
Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
