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 .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/25/2026 has been entered.
Response to Arguments
Applicant's arguments filed 1/13/2026 have been fully considered but they are not persuasive.
With regard to pages 6-10 directed towards the previous 112(a) rejections,
As to Claims 1, 16, and 17,
Applicant initially arts that the specificity of disclosure that the rejections imply is needed is not supported by case law or legal authority, and that the rejections fail to consider how a person of ordinary skill in the art would interpret the specification. The Examiner respectfully disagrees.
MPEP 2163.03(V) expressly states “While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved,” and that “The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification.” Here, it has been held that the original disclosure must reasonably set forth the manner in which claim features are implemented such that a person of ordinary skill in the art would reasonably recognize what applicant is doing to implement a claim feature. A person of ordinary skill in the art would not reasonably recognize the manner that applicant would implement the claim features, because applicant does not reasonably disclose any device capable of performing the claimed comparative measurement based on a comparison. Meaning, applicant is not merely comparison one signal with another, but instead is then doing something with that comparison. A comparator cannot do more than compare, and thus another device is necessary to perform a function based on the comparison. However, no such device is reasonably disclosed that is capable of such a function, and a person of ordinary skill in the art would not know what applicant is doing. Should applicant disagree, applicant is requested to identify what specific device in the disclosure is being relied upon to implement this claim feature. Processing circuit is not a specific device, as a person of ordinary skill in the art cannot simply order “processing circuitry.” Such a person would need to know what type of processing applicant is referring to in order to recognize what applicant is doing. Similarly, an “ASIC” stands for “Application specific integrated circuit,” meaning that similar to processing circuitry, a person of ordinary skill in the art cannot simply order an “ASIC” without knowing the manner in which applicant is implementing it. This is different from a disclosure of a microprocessor, for example, in which a person of ordinary skill in the art would know what that is, as any microprocessor would work, and such a person would only need decide which type is preferable. The same issue exists with “measurement circuit,” as such a circuit is not well-known in the art, and a person of ordinary skill in the art cannot simply purchase any “measurement circuit.” Without some disclosure as to what the circuit is, a person of ordinary skill in the art would not reasonably recognize such a circuit or the manner in which it is implemented.
The Examiner acknowledges that various sections of the disclosure cited by applicant, but the Examiner respectfully notes that none of these sections reasonably overcome the previous 112(a) rejection. These sections note that the measurement circuit can include components such as silicon devices, chiplets, passives, discrete components, processing circuitry or an ASIC. However, none of these features either reasonably identify a single well-known or conventional device that was well-known to be used in the claimed manner, or reasonably describe the manner in which applicant is implementing the claim feature. For example, discloses that the measurement circuit can include “silicon devices” or “discrete components” does not reasonably identify any particular device that is intended to be used for the claimed purpose. For example, a “silicon device” is not an off-the-shelf device that can be ordered, as it does not reasonably identify any particular device. The same issue exists with reciting “processing circuitry” or an “ASIC.” The phrase “processing circuitry” does not reasonably identify any particular component that was conventional and well-known to be used in the claimed manner. Similarly, and ASIC is an application specific component, and thus any random ASIC cannot be selected for the claimed purpose. Meaning, unlike a general purpose microprocessor that could be used in most instances, the same is not true for an ASIC. An ASIC, must like the above features not above, can include any number of parts and any combination of all digital, all analog, or a combination of analog and digital parts. As such, merely recited an ASIC does not reasonably identify any particular device that was well-known to be used for the claimed purpose.
Applicant is permitted to rely upon that which is well-known in the art without further explanation, but applicant must reasonably establish that applicant intends to rely upon what is well-known in the art and provide sufficient guidance so that a person of ordinary skill in the art would reasonably recognize what well-known component applicant intended to rely upon. However, none of the examples cited by applicant reasonably meet this requirement, as none of them reasonably identify any particular device that was well-known in the art, and was well-known in the art to be used for the claimed purpose. As such, the Examiner respectfully disagrees.
With regard to the arguments on pages 10-15 directed towards the previous prior art rejections
As to Claim 1,
Applicant argues that Cochoorn et al. (Cochoorn) (US 2005/0087000) does not disclosure different sealed compartments, but the Examiner respectfully disagrees.
Applicant’s primary argument is that Cochoorn does not expressly disclose sealed compartments, but the Examiner has previously explained that such compartments must be present. Cochoorn expressly discloses the comparison of two different sets of particles as seen in Figure 8, and where the particles are in a fluid or gas (Paragraph [0054]). The only way the particles and fluid can be contained such that they can be measured is in sealed enclosures, or else the fluid would flow away. In fact, as noted by applicant Cochoorn expressly discloses compartments, which is found in paragraph [0021]. The term “sealed” only requires that the compartments be closed to prevent leaking, and such a feature is reasonably disclosed by Cochoorn who expressly discloses the use of compartments, and discloses that fluid or gas is reasonably contained in them. If the compartment was not sealed, the gas or fluid would escape, and the Examiner therefore respectfully disagrees.
Applicant then argues that Cochoorn does not disclose a measurement of an external stimulus that causes the nanoparticles to move, let alone one based on two measurements. The Examiner respectfully disagrees.
The particles of the disclosure are magnetic particles similar to that of applicant, and these particles will move in the presence of an external magnetic field, even if biased by a known magnetic field in addition to any external magnetic field. The voltage at the sensors will change based upon any external magnetic field, including the bias known magnetic field that is generated. For example, when the system is on and no nanoparticles are present, the magnetic sensors will provide one output in the presence of the generated known magnetic field. But when magnetic nanoparticles are present, they will become magnetized, generate their own respective induced magnetic field, which will alter any magnetic field detected by the magnetic sensors. As such, the actual detection of the device is a measurement of the external magnetic field, because it is this field that is actually being altered by the presence or absence of the magnetic nanoparticles. As such, the Examiner respectfully disagrees.
As to Claim 16,
The arguments made here pertain to the use of sealed enclosures and associated magnetic fields. Such arguments have reasonably been responded to above with regard to Claim 1, and applicant’s attention is directed to the above response.
As to Claim 17,
Cochoorn discloses this claim for the reasons explained above, and the arguments here are similar to those responded to above. As such, applicant’s attention is directed to the above response.
Applicant argues that Kalaboukhov et al. (Kalaboukhov) (SE 1950159 A1) does not disclose providing a detection signal indicative of magnetic flux differences between magnetic samples, but the Examiner respectfully notes that such a feature is not claimed. “Magnetic flux differences” are not recited in Claim 17.
Furthermore, the Examiner respectfully notes that Kalaboukhov is not required to disclose the argued function explicitly. It is the Examiner’s position that Kalaboukhov discloses a substantially similar device, and that such a device could perform the same function claimed by applicant, because it is the structure of the apparatus itself that enables it to perform that claimed function. Here, Kalaboukhov discloses the same function, including an expressly disclose of a comparator (316), also see (Page 14, Lines 1-3, 8-10, 13-16). Because Kalaboukhov discloses substantially similar structure and is reasonably capable of performing the claim function, such a feature is reasonably disclosed by the prior art. Note that as explained in MPEP 2112(V), “NCE A REFERENCE TEACHING PRODUCT APPEARING TO BE SUBSTANTIALLY IDENTICAL IS MADE THE BASIS OF A REJECTION, AND THE EXAMINER PRESENTS EVIDENCE OR REASONING TO SHOW INHERENCY, THE BURDEN OF PRODUCTION SHIFTS TO THE APPLICANT
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product.” Applicant, respectfully, has not explained why the prior art would not reasonably be capable of the function as claimed.
Kalaboukhov discloses a similar arrangement as applicant and as Cochoorn, including the use of magnetic particles. Claim 17 is an apparatus claim, and not a method claim, and therefore only requires a system that is reasonably capable of making a measurement of an external stimulus. Kalaboukhov reasonably discloses such a system because any external magnetic field would reasonably affect the position of the magnetic particles and thus change any measurement of the system. As such, the prior art is reasonably capable of making the claimed measurement, especially given that it is structurally substantially similar to that of applicant. The Examiner therefore respectfully disagrees.
As to Claims 6-8,
The Examiner respectfully disagrees that a person of ordinary skill in the art would not have found a reason to modify the rejections as proposed in the 35 U.S.C. 103 rejections. The Examiner has provided explicit motivations for these rejections, and applicant, respectfully, does not provide any specific reason why a person would not have been motivated as suggested in the rejections.
With regard to any remaining arguments, applicant’s attention is directed to the above response and rejections found below.
Claim Rejections - 35 USC § 112
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.
Claims 1, 2, 5-9, 14-18, and 20-24 are 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.
As to Claims 1 and 16,
The phrase “providing a comparative measurement based on comparing at least the first measurement with the second measurement” on lines 5-6 of Claim 1 and lines 6-7 of Claim 16 lacks proper written description. At issue here is that applicant does not reasonably disclose any specific device or component that is reasonably capable of providing the above comparative measurement or any device that is reasonably capable of making a comparison. While applicant does disclose an ASIC, an ASIC is an application specific device that is specially designed for a specific task. As such, merely referencing such a device does not reasonable provide proper written description unless applicant either identifies a specific example of such an ASIC that could be used for the claimed task, or provides sufficient details of the ASIC implemented by applicant. Further, while applicant does reference various consumer electronics, none of these devices are reasonably correlated or disclosed to perform the above claim features. Merely stating that the claimed device could be implemented in a device such as a television does not reasonably demonstrate the manner in which a television would be used to implement the claim features. Meaning, while applicant can rely upon a device that is well-known, such a device must also be reasonably well-known to be used to perform the claim feature. In the instant case, no specific device, whether well-known or otherwise, has been disclosed or identified to implement the above claim feature. As such, this phrase lacks proper written description.
As to Claim 17,
The phrase “a measurement circuit configured to generate a measurement of the external stimulus based on comparing a first measurement associated with position of the one or more first particles and a second measurement associated with position of the one or more second particles” on lines 7-10 lacks proper written description. At issue here is that applicant does not reasonably disclose any specific device or component that is reasonably capable of providing the above comparative measurement or any device that is reasonably capable of making a comparison, and applicant does not provide any reasonably disclosure as to the structure of the measurement circuit. While applicant does disclose an ASIC, an ASIC is an application specific device that is specially designed for a specific task. As such, merely referencing such a device does not reasonable provide proper written description unless applicant either identifies a specific example of such an ASIC that could be used for the claimed task, or provides sufficient details of the ASIC implemented by applicant. Further, while applicant does reference various consumer electronics, none of these devices are reasonably correlated or disclosed to perform the above claim features. Merely stating that the claimed device could be implemented in a device such as a television does not reasonably demonstrate the manner in which a television would be used to implement the claim features. Meaning, while applicant can rely upon a device that is well-known, such a device must also be reasonably well-known to be used to perform the claim feature. In the instant case, no specific device, whether well-known or otherwise, has been disclosed or identified to implement the above claim feature. A measurement circuit is not by itself a well-known circuit, and applicant does not reasonably provide any details or explanation as to the manner in which such a circuit is implemented. As such, this phrase lacks proper written description.
As to Claims 2, 5-9, 14, 15, 18, and 20-24,
These claims stand rejected for incorporating and reciting the above rejected subject matter of their respective parent claim(s) and therefore stand rejected for the same reasons.
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.
Claims 16, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cochoorn et al. (Cochoorn) (US 2005/0087000).
As to Claim 16,
Cochoorn discloses A method comprising: generating, using the measurement circuit, a first measurement (measurement at 19 and/or 19’) and a second measurement (measurement at 17 and/or 17’) based on positions of magnetically sensitive particles within sealed enclosures (Figure 8), (Paragraphs [0021],[0073],[0074] / note each recessed region is reasonably a sealed enclosure or part of a sealed enclosure (compartment as disclosed in paragraph [0021]), as there must be sealed enclosures that contain the fluid being tested and prevent it from leaking), wherein the measurement circuit is integrated with the sealed enclosures (Figure 8), and providing a comparative measurement based on comparing at least the first measurement with the second measurement (Paragraphs [0074],[0075],[0096]), wherein the first and second measurements are associated with two or more of the sealed enclosures (Paragraphs [0021],[0074] / note the regions are compartments), and wherein the comparative measure is a measurement of an external magnetic field applied to the sealed enclosures (Paragraphs [0074]-[0076] / note 1) that this feature is a property of the system because any measurement is expressly based upon any applied magnetic field, and 2) the sensors use GMR or TMR sensor materials, and any detected voltage changes based on these sensors must be reasonably indicative of any external magnetic field when such a field is present).
(Note: The measurement circuit is reasonably integrated with the sealed enclosures because the wiring and sensors are reasonably coupled to and thus integrated with the sealed enclosures as seen in Figure 8).
As to Claim 17,
Cochoorn discloses A system comprising: a sealed enclosure (one of the discrete compartments / recessed regions that contain the fluid and thus must be sealed) containing one or more first particles (Figure 8), (Paragraphs [0021],[0073],[0074] / note each recessed region is reasonably a sealed enclosure (compartment as disclosed in paragraph [0021]), holding the particles as seen in Figure 8 , and note that there are discrete compartments), wherein the one or more first particles are configured to move in response to an external stimulus (Paragraph [0070] / note particles being pulled by the magnetic field, and not further that because they are magnetic, the particles are configured to be moved by magnetic fields in the same manner as applicant); a second sealed enclosure (another of the discrete compartments / recessed regions) containing one or more second particles (Figure 8), (Paragraphs [0021],[0073],[0074] / note each recessed region is reasonably an sealed enclosure (compartment as disclosed in paragraph [0021]), holding the particles as seen in Figure 8, and note that there are discrete compartments); and a measurement circuit (e.g. comparator and associated sensors and wiring) integrated with the first and second sealed enclosures, the measurement circuit configured to generate a measurement of the external stimulus based on comparing a first measurement associated with position of the one or more first particles and a second measurement associated with position of the one or more second particles (Paragraphs [0074]-[0076] / note 1) that this feature is a property of the system because any measurement is expressly based upon any applied magnetic field, and 2) the sensors use GMR or TMR sensor materials, and any detected voltage changes based on these sensors must be reasonably indicative of any external magnetic field when such a field is present).
(Note: The measurement circuit is reasonably integrated with the sealed enclosures because the wiring and sensors are reasonably coupled to and thus integrated with the sealed enclosures as seen in Figure 8).
As to Claim 18,
Cochoorn discloses the external stimulus is a magnetic field (Paragraphs [0070],[0073,[0074]).
Claims 17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kalaboukhov et al. (Kalaboukhov) (SE 1950159 A1).
As to Claim 17,
Kalaboukhov discloses A system comprising: a first sealed enclosure (304) containing one or more first particles (331) (Figures 4A, 4B, 5), (Page 13, Lines 29-30), (Pages 14,15), wherein the one or more first particles are configured to move in response to an external stimulus (Page 15 / note particles are magnetic particles and thus must be configured to move in response to a magnetic field, as this is the same mechanism used by applicant); a second sealed enclosure (305) containing one or more second particles (331) (Figures 4A, 4B, 5), (Page 13, Lines 29-30), (Pages 14,15), and a measurement circuit (comparator chip 316) integrated with the first and second sealed enclosures, the measurement circuit configured to generate a measurement of the external stimulus based on comparing a first measurement associated with position of the one or more first particles and a second measurement associated with position of the one or more second particles (Page 14, Lines 1-3, 8-10, 13-16).
As to Claim 20,
Kalaboukhov discloses the one or more first particles are in a first fluid and the one or more second particles are in a second fluid, and the first fluid is a different type of fluid than the second fluid (Page 14, Lines 13-16).
Claim Rejections - 35 USC § 102/103
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 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.
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.
Claim(s) 1, 2, 5, 9, 15, 21, 22, and 24 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Cochoorn et al. (Cochoorn) (US 2005/0087000) or, in the alternative, under 35 U.S.C. 103 as obvious over Cochoorn et al. (Cochoorn) (US 2005/0087000) in view of Klein et al. (Klein) (US 2023/0085052).
As to Claim 1,
Cochoorn discloses A method comprising: generating a first measurement (measurement at 19 and/or 19’) and a second measurement (measurement at 17 and/or 17’) based on positions of magnetically sensitive particles within one or more compartments (Figure 8), (Paragraphs [0021],[0073],[0074] / note each recessed region is reasonably a compartment (compartment as disclosed in paragraph [0021]), holding the particles as seen in Figure 8, and note that there are discrete compartments), wherein at least some of the particles are configured to move in response to an external stimulus (Paragraph [0070] / note particles being pulled by the magnetic field); and providing a comparative measurement based on comparing at least the first measurement with the second measurement (Paragraphs [0074],[0075],[0096]), wherein the comparative measurement is a measurement of the external stimulus (Paragraphs [0074]-[0076] / note 1) that this feature is a property of the system because any measurement is expressly based upon any applied magnetic field, and 2) the sensors use GMR or TMR sensor materials, and any detected voltage changes based on these sensors must be reasonably indicative of any external magnetic field when such a field is present), wherein the first and second measurements are associated with different sealed enclosures, the different sealed enclosures each comprising a different type of fluid and/or a different type of particle (Paragraphs [0003],[0021],[0074] / note the regions are compartments), (Paragraphs [0021],[0074] / note the regions are reasonably sealed or else the fluid and related particles would escape), (Figure 8).
Applicant does not claim that the measurements are from the different types of fluids or particles in the sealed enclosures, and instead only claims that the measurements are associated with these different fluids or particles in the sealed enclosures. The biochip / micro-array of the application has a large number of different molecules that are analyzed in parallel, and thus at the same time, as explained in paragraph [0003]. As such, any measurements are reasonably associated with these different molecules just being measurements for the molecules on the same chip/array. That stated, because different molecules are being analyzed at the same time, it is also reasonable to conclude that this includes an analysis of one type of molecule relative to another, which in combination with the differential measurements discussed in paragraph [0074], would reasonably disclose the claim feature.
That stated, only to the extent that it is held that Cochoorn does not disclose the first and second measurements are associated with different sealed enclosures, the different sealed enclosures each comprising a different type of fluid and/or a different type of particle, then the following rejection is also presented.
Klein discloses the first and second measurements are associated with the different types of particles (Paragraphs [0493],[0495] / note the labels can be detected with GMR sensors, and that the labels include magnetic particles having different shapes and sizes with different amounts of magnetism).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn to include the first and second measurements are associated with different sealed enclosures, the different sealed enclosures each comprising a different type of fluid and/or a different type of particle, then the following rejection is also presented given the above disclosure and teaching of Klein in order to advantageously be able to more easily track and identify different antibodies or other binded objects by having magnetic particles attached to them that can be more easily distinguished due to their sizes, shapes, or different levels of magnetism (note paragraph [0496] explaining what the bind pairs can include).
As to Claim 2,
Cochoorn discloses the external stimulus is a magnetic field, and the comparative measurement is indicative of the magnetic field (Paragraphs [0070],[0074],[0075],[0096]).
As to Claim 5,
Cochoorn discloses the particles are magnetically sensitive and in at least one fluid (Paragraphs [0070],[0073],[0074]).
As to Claim 9,
Cochoorn discloses resetting the positions of particles before generating the first measurement (Paragraph [0115] / note for example the temporary displacing of particles, thus setting/resetting their position for each measurement).
As to Claim 15,
Cochoorn discloses the different sealed enclosures are an integrated with a sensing structure (Paragraphs [0020],[0068] / note magnetoresistive sensors such as the GMR).
As to Claim 21,
Cochoorn discloses the one or more compartments comprise an enclosure that includes electrically conductive paths from an internal part of the enclosure to external to the enclosure (Figures 1,8A / note that the “enclosure” can be the entirety of the device that includes not just the fluid channels but also the sensors themselves, and as seen in Figure 8A, electrical connections extend beyond the sensors to an outside voltage meter. These electrical connections reasonably therefore begin internal to the enclosure, at each respective sensor, and extend external the enclosure so as to be attached to a voltage meter).
As to Claims 22 and 24,
Cochoorn discloses the one or more first particles are a different type of particle than the one or more second particles (Paragraph [0003]), the one or more first particles have a different magnetic sensitivity than the one or more second particles (Paragraph [0003]).
The biochip / micro-array of the application has a large number of different molecules that are analyzed in parallel, and thus at the same time, as explained in paragraph [0003]. As such, any measurements are reasonably associated with these different molecules just being measurements for the molecules on the same chip/array. That stated, because different molecules are being analyzed at the same time, it is also reasonable to conclude that this includes an analysis of one type of molecule relative to another, which in combination with the differential measurements discussed in paragraph [0074], would reasonably disclose the claim feature. Also, different types of particles will have different magnetic sensitivities, thus also disclosing the above claim feature.
That stated, only to the extent that it is held that Cochoorn does not the one or more first particles are a different type of particle than the one or more second particles, and the one or more first particles have a different magnetic sensitivity than the one or more second particles. then the following rejection is also presented.
Klein discloses the one or more first particles are a different type of particle than the one or more second particles and the one or more first particles have a different magnetic sensitivity than the one or more second particles (Paragraphs [0493],[0495] / note the labels can be detected with GMR sensors, and that the labels include magnetic particles having different shapes and sizes with different amounts of magnetism).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn to include the one or more first particles are a different type of particle than the one or more second particles and the one or more first particles have a different magnetic sensitivity than the one or more second particles as taught by Klein in order to advantageously be able to more easily track and identify different antibodies or other binded objects by having magnetic particles attached to them that can be more easily distinguished due to their sizes, shapes, or different levels of magnetism (note paragraph [0496] explaining what the bind pairs can include).
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.
Claims 6, 7, 8, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Cochoorn et al. (Cochoorn) (US 2005/0087000) in view of Klein et al. (Klein) (US 2023/0085052).
As to Claims 6, 7, and 8,
Cochoorn does not disclose the first and second measurements are associated with the different types of particles, wherein the different types of particles have different magnetic sensitivities, the two or more types of particles comprise one or more first particles and one or more second particles, wherein the one or more first particles have at least one different property than the one or more second particles, the at least one different property comprising at least one of size or shape.
Klein discloses the first and second measurements are associated with the different types of particles, wherein the two or more types of particles have different magnetic sensitivities, the two or more types of particles comprise one or more first particles and one or more second particles, wherein the one or more first particles have at least one different property than the one or more second particles, the at least one different property comprising at least one of size or shape (Paragraphs [0493],[0495] / note the labels can be detected with GMR sensors, and that the labels include magnetic particles having different shapes and sizes with different amounts of magnetism).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn to include the first and second measurements are associated with the different types of particles, wherein the two or more types of particles have different magnetic sensitivities, the different types of particles comprise one or more first particles and one or more second particles, wherein the one or more first particles have at least one different property than the one or more second particles, the at least one different property comprising at least one of size or shape as taught by Klein in order to advantageously be able to more easily track and identify different antibodies or other binded objects by having magnetic particles attached to them that can be more easily distinguished due to their sizes, shapes, or different levels of magnetism (note paragraph [0496] explaining what the bind pairs can include).
As to Claim 23,
Cochoorn does not disclose the one or more first particles have at least one of a different size or a different shape than the one or more second particles.
Klein discloses the one or more first particles have at least one of a different size or a different shape than the one or more second particles (Paragraphs [0493],[0495] / note the labels can be detected with GMR sensors, and that the labels include magnetic particles having different shapes and sizes with different amounts of magnetism).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn to include the one or more first particles have at least one of a different size or a different shape than the one or more second particles as taught by Klein in order to advantageously be able to more easily track and identify different antibodies or other binded objects by having magnetic particles attached to them that can be more easily distinguished due to their sizes, shapes, or different levels of magnetism (note paragraph [0496] explaining what the bind pairs can include).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cochoorn et al. (Cochoorn) (US 2005/0087000) in view of Kalaboukhov et al. (Kalaboukhov) (SE 1950159 A1).
As to Claim 14,
Cochoorn does not disclose the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid.
Kalaboukhov discloses the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid (Page 14, Lines 13-16).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn to include the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid as taught by Kalaboukhov in order to advantageously faster processing of fluids at reduced cost by allowing a single device to perform measurement of more than one fluid at the same time.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Cochoorn et al. (Cochoorn) (US 2005/0087000) in view of Klein et al. (Klein) (US 2023/0085052) as applied to Claim 1 and in further of Kalaboukhov et al. (Kalaboukhov) (SE 1950159 A1).
As to Claim 14,
Cochoorn in view of Klein does not disclose the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid.
Kalaboukhov discloses the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid (Page 14, Lines 13-16).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Cochoorn in view of Klein to include the different sealed enclosures comprise a first sealed enclosure containing a first fluid and a second sealed enclosure containing a second fluid, the first fluid being a different type of fluid than the second fluid as taught by Kalaboukhov in order to advantageously faster processing of fluids at reduced cost by allowing a single device to perform measurement of more than one fluid at the same time.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID M. SCHINDLER whose telephone number is (571)272-2112. The examiner can normally be reached 8am-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, Lee Rodak can be reached at 571-270-5628. 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.
DAVID M. SCHINDLER
Primary Examiner
Art Unit 2858
/DAVID M SCHINDLER/Primary Examiner, Art Unit 2858