DETAILED ACTION
The amendment filed on 02/16/2026 has been entered and fully considered. Claims 1-20 are pending, of which claim 1, 4-6, 10 and 12 are amended.
Response to Amendment
In response to amendment, the examiner maintains rejection over the prior art established in the previous Office 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 .
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.
Claim 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-48 of U.S. Patent No. 11,738,336. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claims and the currently patented claims expressly recite the same subject matter, it would have been obvious to one of ordinary skill in the art at the time the invention was made to employ both device and methods, as recited in both sets of claims.
The presently pending claims and ‘336 patent are directed to the same inventive concept --detecting labeled molecule using STO sensors and magnetic nanoparticles in a detection device comprising a fluidic channel and detection circuitry.
For example:
• Claim 1 recites labeling nucleotide precursors with magnetic nanoparticles and detecting STO oscillation frequencies to determine which nucleotide precursor has been detected.
• The claims of the ’336 patent disclose labeling molecules with magnetic nanoparticles and detecting STO oscillation frequencies to determine the molecule incorporation events.
The claimed features -- STO sensors, magnetic nanoparticle labels, fluidic channels, and detection of STO signals to determine molecule identity. The differences between the claims therefore amount to routine implementation choices within the same invention rather than patentably distinct subject matter
Thus, the pending claims and the patented claims are directed to substantially the same detection architecture and sequencing approach, differing primarily in whether the subject matter is expressed in method form or apparatus form, and the molecule is nucleotide precursor.
Such differences do not confer patentable distinctness. It is well established that method claims and apparatus claims directed to the same invention are not patentably distinct when the method merely recites the operation of the apparatus. See MPEP §804(II)(B).
A person of ordinary skill in the art would have found it obvious to practice the claimed methods using the apparatus of the ’336 patent, and likewise to configure the apparatus of the ’336 patent to perform the claimed methods. Accordingly, the pending claims represent no more than obvious variants of the claims of the ’336 patent.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 14, 16 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Srimani et al. (arXiv, 2015, IDS) (Srimani).
Regarding claim 14, Srimani discloses an apparatus for molecule detection, the apparatus comprising:
at least one fluidic channel (Fig. 1);
a plurality of spin torque oscillators (STOs) (Fig. 1), each of the plurality of STOs configured to:
(a) generate a radio-frequency (RF) signal in a specified frequency band in response to detecting a magnetic nanoparticle (MNP) labeling a molecule to be detected within the at least one fluidic channel (page 3-5), or
(b) cease to generate the RF signal in the specified frequency band in response to detecting the MNP labeling the molecule to be detected within the at least one fluidic channel (page 3-5);
means for determining whether at least one of the plurality of STOs is generating the RF signal in the specified frequency band (Fig. 3); and
means for determining, in response to determining whether the at least one of the plurality of STOs is generating the RF signal in the specified frequency band, that the molecule to be detected has or has not been detected (page 3-5).
Claim 14 does not require that oscillation be physically switched on or off. Rather, the claim requires that the STOs be configured such that generation of an RF signal within a specified frequency band indicates detection of a magnetic nanoparticle, or absence of the signal indicates absence of the nanoparticle. Under the broadest reasonable interpretation, this encompasses situations in which the RF signal changes in amplitude or shifts relative to the monitored frequency band such that the signal is effectively detected or not detected within the specified band.
Srimani discloses that the presence of a magnetic nanoparticle perturbs the magnetic field surrounding the STO, which significantly alters the oscillation characteristics of the STO, including the output voltage signal (Srimani, pp. 3-5). Srimani further shows FFT analysis of STO output signals and demonstrates that the presence of a nanoparticle produces measurable changes in the RF signal spectrum (see Fig. 12). Thus, Srimani teaches monitoring whether an STO output signal falls within a detectable RF range in order to determine nanoparticle presence.
Spectral analysis of a signal inherently involves determining both frequency and the amplitude associated with that frequency. A frequency spectrum is defined by the distribution of signal energy as a function of frequency, and therefore determining amplitude values at spectral components necessarily requires identifying the corresponding frequencies of those components. Techniques such as Fourier transform analysis convert a time-domain signal into a frequency-domain representation in which each spectral component is characterized by both a frequency coordinate and a corresponding amplitude value. Consequently, any analysis of amplitude in the frequency spectrum necessarily requires determining the frequencies at which those amplitudes occur.
Srimani performs frequency-domain analysis of the STO output signal using FFT spectra (see Srimani Fig. 12 and related discussion). Such FFT analysis inherently determines the oscillation frequencies of the STO signal as well as the amplitudes of those frequency components. Therefore, Srimani necessarily determines whether the STO signal occurs at a particular frequency or within a specified frequency band.
Srimani clearly teaches detecting magnetic nanoparticles by analyzing the RF output characteristics of the STO sensor. The FFT plots and sensitivity analysis demonstrate that signal changes in the oscillator output correspond to nanoparticle presence. A determination of nanoparticle detection is therefore inherently made based on the measured RF signal characteristics.
Therefore, Srimani discloses determining whether the molecule labeled with the magnetic nanoparticle has been detected.
Regarding claim 16, Srimani discloses that wherein the means for determining whether the at least one of the plurality of STOs is generating the RF signal is configured to apply a DC current to the at least one of the plurality of STOs (page 5).
Spin torque oscillators require DC bias current to generate RF oscillation. Srimani explicitly discloses applying DC bias current to the STOs to establish oscillation conditions (Srimani p. 4). Because the detection method relies on monitoring the RF output generated under this bias condition, the circuitry applying DC current forms part of the apparatus that determines whether the STO is generating the RF signal.
Regarding claim 20, Srimani discloses that wherein the means for determining, in response to determining whether the at least one of the plurality of STOs is generating the RF signal, that the molecule to be detected has or has not been detected comprises a processor (inherent).
Srimani performs FFT analysis and signal characterization of STO output signals, which necessarily requires digital signal processing or equivalent computation. Such analysis inherently requires a processor or equivalent computing device capable of performing frequency-domain analysis and determining detection outcomes.
Whether the processor is integrated within the detection apparatus or implemented using standard signal processing hardware does not avoid the limitation, because claim 20 merely requires that the determination comprises a processor.
Therefore, the processor limitation is inherently disclosed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Srimani et al. (arXiv, 2015, IDS) (Srimani) in view of Mandell et al. (US 2018/0237850, IDS) (Mandell).
Regarding claim 1, Srimani teaches a method of distinguishing between labeled DNA using a detection device and at least two distinct groups of magnetic nanoparticles (MNPs) (Fig. 1, page 1, par 3), the detection device comprising a plurality of spin torque oscillators (STOs) (20 such devices oscillating at different frequencies) (abstract) and at least one fluidic channel (Fig. 1), the method comprising:
labeling a first DNA with a first MNP, the first MNP being from a first group of the at least two distinct groups of MNPs, the first group selected to cause a magnetization of each of the plurality of STOs to oscillate at approximately a first frequency (Fig. 1, page 1, par 3, page 3-4) (Srimani teaches that magnetic beads of different size/moment cause specific oscillation frequency changes in an STO sensor (page 3));
labeling a second DNA with a second MNP, the second MNP being from a second group of the at least two distinct groups of MNPs, the second group selected to cause the magnetization of each of the plurality of STOs to oscillate at approximately a second frequency (Fig. 1, page 1, par 3, page 3-4) (Srimani explicitly proposes multiplexing by assigning STOs different operating frequencies so that different types of magnetic beads produce distinguishable frequency signatures (page 4; frequency spacing between bead-induced shifts));
adding the labeled first and second DNA to the at least one fluidic channel of the detection device (Fig. 1, page 1, par 3);
detecting a frequency of a signal generated by at least one of the plurality of STOs (page 3-4) (Srimani teaches central principle — STO oscillation frequency is modulated by the magnetic field from the attached MNP label (page 2–4). STO frequency is directly detected to identify bound MNPs);
determining whether the frequency of the signal generated by the at least one of the plurality of STOs matches the first frequency or the second frequency (page 3-4) (Srimani shows distinct frequency offsets based on bead properties (size, magnetic moment) enabling classification (Fig. 3, distinct peaks)); and
in response to the determining, identifying whether the first DNA or the second DNA has been detected (page 3-4) (Srimani teaches frequency shift → identity of bead → identity of labeled analyte).
Srimani teaches an STNO/STO microarray of 20 devices oscillating at different frequencies, enabling frequency-division multiplexing (abstract). The oscillation frequency is controlled by the DC bias current and the applied magnetic field (static + RF). Figures and text show frequency vs bias current and frequency vs magnetic field (page 4-5). A magnetic nanoparticle above the sensor is magnetized by the external field and dipolar fields, and its dipole field contributes to the total field at the STO (page 3).
Srimani explicitly compute the bead field and show that the bead’s magnetic field can alter the STO oscillations (frequency and amplitude) (page 3-4), and Srimani discuss frequency spacing / frequency margin between sensors for multiplexing (page 4-5).
So Srimani gives the physics link (MNP field ↔ STO frequency) and multiple distinct STO frequencies. A magnetized nanoparticle above the STO changes that effective magnetic field and hence can change the oscillation characteristics (page 3). Multiple STOs in an array are injection-locked at different frequencies and separated by a frequency margin for multiplexing (page 4-5).
A person of ordinary skill in the art would have readily recognized that different magnetic nanoparticles (e.g., differing in size, composition, magnetic moment, magnetization, or anisotropy) inherently produce different magnetic fields on the STO, and therefore inherently produce different oscillation frequencies. It would therefore have been obvious to select a first MNP with a first magnetic moment to cause the STOs to oscillate at a first frequency, and to select a second MNP with a different magnetic moment to cause the STOs to oscillate at a second frequency, in order to distinguish between different labeled DNAs. Such a modification represents a predictable use of known properties of MNPs and STOs, consistent with KSR.
Srimani does not specifically teach that the DNA is a nucleotide precursor. However, Mandell teaches that the DNA of interest can be a nucleotide (abstract) and flowing the nucleotide through the chamber for conducting the test (par [0013]). Thus, it would have been obvious to one of ordinary skill in the art to apply Srimani’s method for detecting nucleotide, in order to detect nucleotide.
Regarding claim 2, Srimani teaches that wherein detecting the frequency of the signal generated by the at least one of the plurality of STOs comprises:
collecting samples of the signal generated by the at least one of the plurality of STOs (page 3); and
applying a Fourier transform (FFT) to the samples (Fig. 12c).
Regarding claim 3, Srimani teaches that wherein detecting the frequency of the signal generated by the at least one of the plurality of STOs comprises:
collecting samples of the signal generated by the at least one of the plurality of STOs (Fig. 3); and
determining frequency content of the samples (Fig. 12).
Regarding claim 4, Srimani teaches that wherein detecting the frequency of the signal generated by the at least one of the plurality of STOs comprises:
multiplying the signal generated by the at least one of the plurality of STOs by a first reference signal of approximately the first frequency (page 5); and
multiplying the signal generated by the at least one of the plurality of STOs by a second reference signal of approximately the second frequency (page 5),
and wherein determining whether the frequency of the signal generated by the at least one of the plurality of STOs matches the first frequency or the second frequency comprises:
identifying the frequency of the signal generated by the at least one of the plurality of STOs as the first frequency in response to a result of the multiplying being greater than a first threshold (page 5); and
identifying the frequency of the signal generated by the at least one of the plurality of STOs as the second frequency in response to a result of the multiplying being greater than the first threshold or a second threshold (page 5).
Srimani discloses injection locked STO arrays, where each STO is driven by an RF reference source and detection involves determining how closely the STO frequency matches the injection frequency (page 5). This is a direct form of frequency discrimination by comparing the STO’s oscillation to a known reference.
Injection locking inherently involves mixing the oscillator signal with the reference (multiplicative interaction), since the phase locking equation and the locking range depend on the product of the oscillator signal and the reference source. The system only locks (i.e., the “result is high”) when the STO frequency matches the injected reference frequency.
This is technically equivalent to the “multiply by a reference signal and evaluate the magnitude/phase response” structure recited in the claim.
Regarding claim 5, Srimani teaches that wherein determining whether the frequency of the signal generated by the at least one of the plurality of STOs matches the first frequency or the second frequency comprises determining whether the frequency of the signal generated by the at least one of the plurality of STOs is approximately the first frequency or approximately the second frequency (page 3 & 5).
Srimani teaches STOs oscillate at specific frequencies determined by bias current and magnetic field (page 5). The presence of a magnetic nanoparticle modifies the STO’s effective field, enabling detection by identifying the oscillation frequency (page 3). For multiplexing, different STOs are injection-locked at different frequencies, separated by a defined frequency margin (page 5).
This means Srimani’s entire detection method is based on determining which predetermined reference frequency the STO’s oscillation is near.
Thus, Srimani inherently teaches “determining whether the STO frequency is approximately f₁ or f₂.”
Regarding claim 6, Srimani teaches that wherein determining whether the frequency of the signal generated by the at least one of the plurality of STOs matches the first frequency or the second frequency comprises determining whether the frequency of the signal generated by the at least one of the plurality of STOs is within a first frequency band or within a second frequency band, wherein the first frequency band includes the first frequency, and the second frequency band includes the second frequency (page 5).
Srimani describes A 20-device STO array (abstract), Each STO injection-locked to a different reference frequency (page 5), These reference oscillators are separated by a defined “frequency margin”, and Correct detection requires determining whether the STO oscillation lies within the allowed locking range of each injection-frequency band (page 5).
In injection-locked STO arrays, each STO has a locking bandwidth (Δf), and determining which frequency the STO is locked to inherently means determining whether the STO frequency lies:
within band 1 (centered around f₁), or
within band 2 (centered around f₂).
This is exactly the “frequency band classification” recited by claim 6.
Thus, Srimani teaches frequency bands, locking ranges, and classification by frequency band.
Regarding claim 7, Srimani teaches that wherein the first frequency band and the second frequency band are disjoint (page 4-5).
Srimani explicitly requires that the frequency ranges (locking ranges) of the STOs be non-overlapping (page 4-5). Srimani explains Each STO in the array is injection-locked to a unique reference frequency (page 5). These frequencies are separated by a frequency margin to avoid overlap of locking ranges (page 4-5). Proper multiplexing requires that the STOs not have overlapping locking bandwidths, otherwise a device could lock to the wrong injection tone (page 4-5).
This is exactly the “disjoint frequency band” requirement:
Band 1: locking range around f₁
Band 2: locking range around f₂
Non-overlapping (“disjoint”) bands ensure unambiguous identification.
In other words, Srimani teaches frequency-band separation, non-overlapping locking windows, and disjoint frequency regions for multi-device STO arrays.
Regarding claim 8, Srimani teaches that wherein detecting the frequency of the signal generated by the at least one of the plurality of STOs is performed by a super-heterodyne circuit coupled to the at least one of the plurality of STOs (Fig. 6 & 12).
Srimani teaxches that STOs generate microwave-frequency signals (multiple GHz) (Fig. 6). Srimani analyzes these oscillations in the frequency domain, plotting spectral peaks from the STO output (Fig. 12).
Any POSITA immediately recognizes that GHz oscillator output is typically detected by heterodyne down-conversion, or direct spectrum analysis (which itself uses internal heterodyne mixing), because STO output is precisely the type of signal normally fed into a super-heterodyne receiver or detector.
Regarding claim 9, Srimani teaches that the method of claim 1, further comprising:
in response to identifying that the first nucleotide precursor has been detected, recording an identity of the first nucleotide precursor or an identity of a base complementary to the first nucleotide precursor (page 3), and/or
in response to identifying that the second nucleotide precursor has been detected, recording an identity of the second nucleotide precursor or an identity of a base complementary to the second nucleotide precursor (page 3).
Srimani teaches detection of DNA analytes using magnetic nanoparticle labels (page 1); The detection event produces a frequency classification of the STO signal (page 3); The conclusion of the detection step is identifying which target (tagged oligo) is present (page 3).
Although Srimani does not explicitly say “record the base,” the paper necessarily implies identifying the analyte and reporting the detected DNA sample—i.e., storing the result
Regarding claim 10, Srimani teaches a method of detecting a labeled DNA using a detection device, the detection device comprising a plurality of spin torque oscillators (STOs) and at least one fluidic channel, the method comprising:
labeling a DNA with a magnetic nanoparticle (MNP) (page 1);
adding the labeled DNA to the at least one fluidic channel of the detection device (page 1);
determining whether at least one of the plurality of STOs is generating a signal in a specified frequency band, wherein either (a) presence of the signal in the specified frequency band indicates presence of the MNP or (b) presence of the signal in the specified frequency band indicates absence of the MNP (page 3); and
based at least in part on the determination of whether the at least one of the plurality of STOs is generating the signal in the specified frequency band, determining whether the labeled DNA has been detected (page 3).
Srimani does not specifically teach that the DNA is a nucleotide precursor. However, Mandell teaches that the DNA of interest can be a nucleotide (abstract) and flowing the nucleotide through the chamber for conducting the test (par [0013]). Thus, it would have been obvious to one of ordinary skill in the art to apply Srimani’s method for detecting nucleotide, in order to detect nucleotide.
Regarding claim 11, Srimani teaches that wherein determining whether the at least one of the pluralities of STOs is generating the signal in the specified frequency band comprises:
detecting a presence or absence of a signal at an output of a superheterodyne circuit coupled to the at least one of the plurality of STOs (Fig. 6 &12).
Srimani teaches that STOs generate microwave-frequency signals (multiple GHz) (Fig. 6). Srimani analyzes these oscillations in the frequency domain, plotting spectral peaks from the STO output (Fig. 12).
Any POSITA immediately recognizes that GHz oscillator output is typically detected by heterodyne down-conversion, or direct spectrum analysis (which itself uses internal heterodyne mixing), because STO output is precisely the type of signal normally fed into a super-heterodyne receiver or detector.
Regarding claim 12, Srimani teaches that before adding the labeled DNA to the at least one fluidic channel of the detection device, binding at least one nucleic acid strand to a binding site in the at least one fluidic channel (Fig. 1). The limitation “adding, to the at least one fluidic channel, an extendable primer and a plurality of molecules of nucleic acid polymerase” is exactly the standard DNA synthesis / primer extension setup used in Sanger sequencing, PCR extension steps, Sequencing-by-synthesis (SBS), Single-molecule real-time extension assays, Surface-tethered primer-extension assays (very common), These steps are old, routine, and foundational.
A POSITA would immediately recognize these as obvious preparatory steps to extend a primer with nucleotide precursors (such as the MNP-labeled precursor of claim 10), because the steps are not inventive, do not change STO operation, and do not introduce any new technical relationship with the STO sensor.
Regarding claim 13, Srimani teaches that the method of claim 10, further comprising:
in response to determining that the labeled DNA has been detected, recording (a) an identity of the DNA, or (b) an identity of a base complementary to the labeled DNA (page 3).
Claim(s) 15 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Srimani et al. (arXiv, 2015, IDS) (Srimani).
Regarding claim 15, Srimani teaches determining whether a spin-torque oscillator (STO) is generating an RF signal in a specified frequency band as part of detecting the presence of a magnetic nanoparticle (MNP) (see Srimani, Figs. and accompanying text describing STO RF oscillation, frequency spectra, and detection of MNP-induced frequency shifts). However, Srimani does not expressly disclose that the “means for determining” comprises a super-heterodyne circuit. It is well known in the RF arts that super-heterodyne receivers are standard circuits for detecting and measuring high-frequency oscillator outputs, including microwave-range signals such as those generated by STOs. A super-heterodyne architecture mixes the oscillator output with a reference signal to produce a lower intermediate frequency (IF) that can then be filtered and detected with improved sensitivity and reduced noise. A person of ordinary skill in the art would have found it obvious to implement the “means for determining” in Srimani using a super-heterodyne circuit because doing so would provide the predictable benefits of enhanced signal-to-noise ratio, easier frequency-band discrimination, and compatibility with lower-bandwidth detection electronics, representing the routine application of well-known RF techniques according to their established functions (KSR).
Regarding claim 17, Srimani teaches an apparatus comprising a plurality of spin-torque oscillators (STOs) configured to detect magnetic nanoparticles (MNPs) by monitoring whether the STOs generate an RF signal in a specified frequency band (page 4-5). Srimani further teaches operation of the STOs in an injection-locked regime, stating that tuning the DC bias current “brings the oscillator back to the desired injection-locked frequency” (page 5). Injection-locked oscillator operation is a well-known technique in which an external reference signal is applied to the oscillator so that the oscillator’s frequency is pulled toward or locked to the reference frequency. Although Srimani does not explicitly identify the hardware generating the reference signal, it is well known in the RF arts that injection locking necessarily employs a reference oscillator configured to generate the injected reference signal. A person of ordinary skill in the art would have found it obvious to include such a reference oscillator as part of the “means for determining” in order to generate the reference signal required for injection-locked STO operation, because this represents the predictable use of a known RF component according to its established function to facilitate frequency stabilization and frequency-band discrimination (KSR).
Regarding claim 18, Srimani teaches determining whether a spin torque oscillator (STO) is generating an RF oscillation in a specific frequency band and further teaches operation in an injection-locked regime (page 5). Although Srimani does not explicitly disclose a selectable reference oscillator, it is well known in the RF arts that injection locking requires providing an external reference signal whose frequency must substantially match the expected natural oscillation frequency of the STO.
A person of ordinary skill in the art would have found it obvious to employ a reference oscillator having a selectable frequency and to select that frequency so as to match the expected STO oscillation frequency, because tunability is required to achieve stable injection locking and represents a predictable use of well-known RF components (e.g., tunable oscillators, PLLs, synthesizers) according to their established functions (KSR).
Srimani discusses injection-locked operation does not teach away from frequency-based analysis. Injection locking is a known technique used to stabilize or control the oscillation frequency of an oscillator. Stabilizing oscillator frequency is commonly used in RF sensing systems to improve signal quality and reduce noise. However, stabilizing a frequency does not preclude monitoring whether the oscillator signal occurs at or near a particular frequency. Rather, frequency stabilization simply establishes an expected oscillation frequency around which signal analysis may be performed.
Regarding claim 19, Srimani teaches determining whether a spin-torque oscillator (STO) is generating an RF signal in a specified frequency band (Fig. 12 and related text) but does not explicitly disclose mixing the STO output with a reference signal. It is, however, well known in the RF arts that frequency detection of microwave oscillators is conventionally performed using a mixer stage that multiplies the oscillator output with a reference signal to generate an intermediate frequency (IF) signal suitable for bandpass filtering and amplitude detection, such as in homodyne and heterodyne receivers.
A person of ordinary skill in the art would have found it obvious to configure the “means for determining” to mix the STO output with a reference signal to facilitate detection of whether the STO oscillates within a specified frequency band, because doing so represents a predictable use of standard RF components (mixers, LOs) according to their established functions (KSR).
Response to Arguments
Applicant's arguments filed 02/16/2026 have been fully considered but they are not persuasive.
Nonstatutory Double Patenting
Applicant argues that the nonstatutory double patenting rejection is legally deficient because the Office allegedly failed to compare the pending claims with the claims of U.S. Patent No. 11,738,336 and failed to explain why the claims are not patentably distinct. Applicant’s arguments are not persuasive.
Nonstatutory double patenting is intended to prevent an applicant from obtaining claims in a second patent that are not patentably distinct from claims in a first patent. See MPEP §804. The analysis determines whether the later claims define merely an obvious variant of the earlier claims.
U.S. Patent No. 11,738,336 discloses and claims detection devices and methods using spin torque oscillators (STOs) and magnetic nanoparticles (MNPs) for nucleic acid sequencing and molecule detection. For example, the patent describes detection circuitry coupled to STO sensors and a fluidic channel receiving molecules labeled with magnetic nanoparticles, where the presence of the nanoparticle changes the oscillation characteristics of the STO and detection circuitry determines the presence or absence of the nanoparticle based on the generated signal.
The presently pending claims are directed to the same inventive concept—detecting labeled nucleotide precursors using STO sensors and magnetic nanoparticles in a detection device comprising a fluidic channel and detection circuitry.
For example:
• Claim 1 recites labeling nucleotide precursors with magnetic nanoparticles and detecting STO oscillation frequencies to determine which nucleotide precursor has been detected.
• The claims of the ’336 patent disclose labeling molecules with magnetic nanoparticles and detecting STO output signals to determine the molecule incorporation events.
Thus, the pending claims and the patented claims are directed to substantially the same detection architecture and sequencing approach, differing primarily in whether the subject matter is expressed in method form or apparatus form and the molecule is nucleotide precursor.
Such differences do not confer patentable distinctness. It is well established that method claims and apparatus claims directed to the same invention are not patentably distinct when the method merely recites the operation of the apparatus. See MPEP §804(II)(B).
A person of ordinary skill in the art would have found it obvious to practice the claimed methods using the apparatus of the ’336 patent, and likewise to configure the apparatus of the ’336 patent to perform the claimed methods. Accordingly, the pending claims represent no more than obvious variants of the claims of the ’336 patent.
Applicant further argues that the Office did not identify specific limitations rendering the claims obvious variants. However, as explained above, the claimed features -- STO sensors, magnetic nanoparticle labels, fluidic channels, and detection of STO signals to determine nucleotide identity -- are all taught in the ’336 patent. The differences between the claims therefore amount to routine implementation choices within the same invention rather than patentably distinct subject matter.
Accordingly, the rejection based on nonstatutory double patenting over claims 1–48 of U.S. Patent No. 11,738,336 is maintained.
Applicant may overcome this rejection by filing a terminal disclaimer in accordance with 37 CFR 1.321.
Claim Rejections – 35 U.S.C. 102
Claim 14
Applicant argues that Srimani does not disclose “a plurality of spin torque oscillators (STOs), each configured to generate or cease to generate an RF signal in a specified frequency band in response to detecting a magnetic nanoparticle.” Applicant asserts that Srimani’s STOs oscillate continuously and that detection relies on amplitude modulation rather than conditional generation of an RF signal.
The argument is not persuasive.
Claim 14 does not require that oscillation be physically switched on or off. Rather, the claim requires that the STOs be configured such that generation of an RF signal within a specified frequency band indicates detection of a magnetic nanoparticle, or absence of the signal indicates absence of the nanoparticle. Under the broadest reasonable interpretation, this encompasses situations in which the RF signal changes in amplitude or shifts relative to the monitored frequency band such that the signal is effectively detected or not detected within the specified band.
Srimani discloses that the presence of a magnetic nanoparticle perturbs the magnetic field surrounding the STO, which significantly alters the oscillation characteristics of the STO, including the output voltage signal (Srimani, pp. 3–5). Srimani further shows FFT analysis of STO output signals and demonstrates that the presence of a nanoparticle produces measurable changes in the RF signal spectrum (see Fig. 12). Thus, Srimani teaches monitoring whether an STO output signal falls within a detectable RF range in order to determine nanoparticle presence.
Applicant’s argument that Srimani detects amplitude rather than frequency does not distinguish the claim. The claim only requires determining whether an RF signal is generated within a specified frequency band, which inherently occurs when analyzing the RF spectrum of the oscillator output. Srimani’s FFT analysis necessarily evaluates the RF signal within a frequency band, thereby satisfying the claimed limitation.
Spectral analysis of a signal inherently involves determining both frequency and the amplitude associated with that frequency. A frequency spectrum is defined by the distribution of signal energy as a function of frequency, and therefore determining amplitude values at spectral components necessarily requires identifying the corresponding frequencies of those components. Techniques such as Fourier transform analysis convert a time-domain signal into a frequency-domain representation in which each spectral component is characterized by both a frequency coordinate and a corresponding amplitude value. Consequently, any analysis of amplitude in the frequency spectrum necessarily requires determining the frequencies at which those amplitudes occur.
Srimani performs frequency-domain analysis of the STO output signal using FFT spectra (see Srimani Fig. 12 and related discussion). Such FFT analysis inherently determines the oscillation frequencies of the STO signal as well as the amplitudes of those frequency components. Therefore, Srimani necessarily determines whether the STO signal occurs at a particular frequency or within a specified frequency band.
Accordingly, Applicant’s argument that Srimani measures amplitude but not frequency is not persuasive, because spectral analysis inherently determines both parameters.
Applicant argues that Srimani does not disclose “means for determining whether the STO is generating an RF signal in the specified frequency band” because Srimani assumes continuous oscillation.
The argument is not persuasive.
Srimani explicitly performs FFT analysis of the STO output signal (Fig. 12) to evaluate oscillation characteristics. Such spectral analysis inherently requires circuitry or processing elements that determine whether an RF signal exists within a particular frequency band. Under 35 U.S.C. §112(f), the claimed “means for determining” reads on the signal analysis circuitry used to perform this function.
Thus, Srimani discloses the claimed determination step.
Applicant further argues that Srimani does not disclose determining detection based on whether an RF signal is generated within a frequency band.
The argument is not persuasive.
Srimani clearly teaches detecting magnetic nanoparticles by analyzing the RF output characteristics of the STO sensor. The FFT plots and sensitivity analysis demonstrate that signal changes in the oscillator output correspond to nanoparticle presence. A determination of nanoparticle detection is therefore inherently made based on the measured RF signal characteristics.
Therefore, Srimani discloses determining whether the molecule labeled with the magnetic nanoparticle has been detected.
Claim 16
Applicant argues that Srimani applies DC bias current only to sustain oscillation and not as part of a “means for determining.”
The argument is not persuasive.
Spin torque oscillators require DC bias current to generate RF oscillation. Srimani explicitly discloses applying DC bias current to the STOs to establish oscillation conditions (Srimani p. 4). Because the detection method relies on monitoring the RF output generated under this bias condition, the circuitry applying DC current forms part of the apparatus that determines whether the STO is generating the RF signal.
Thus, Srimani teaches the limitation of claim 16.
Claim 20
Applicant argues that a processor is not inherently disclosed because signal analysis could be performed offline or using external equipment.
The argument is not persuasive.
Srimani performs FFT analysis and signal characterization of STO output signals, which necessarily requires digital signal processing or equivalent computation. Such analysis inherently requires a processor or equivalent computing device capable of performing frequency-domain analysis and determining detection outcomes.
Whether the processor is integrated within the detection apparatus or implemented using standard signal processing hardware does not avoid the limitation, because claim 20 merely requires that the determination comprises a processor.
Therefore, the processor limitation is inherently disclosed.
Claim Rejections – 35 U.S.C. 103
Claim 1
Applicant argues that neither Srimani nor Mandell discloses distinguishing between molecules using multiple groups of magnetic nanoparticles selected to produce different STO frequencies.
The argument is not persuasive.
Srimani teaches detection of magnetic nanoparticles using spin torque oscillators and explains that the presence of a magnetic nanoparticle in proximity to the STO perturbs the magnetic field environment of the oscillator and thereby changes the oscillation characteristics of the STO output signal. Srimani further analyzes the STO output signal using spectral analysis (e.g., FFT spectra), which inherently evaluates oscillation frequencies of the STO signal.
Mandell teaches labeling nucleotide molecules with magnetic nanoparticles and explains that such nanoparticles may have different magnetic properties and may be used for molecular detection and sequencing applications.
A person of ordinary skill in the art would have recognized that magnetic nanoparticles having different magnetic properties will produce different magnetic stray fields and therefore different perturbations to the oscillation characteristics of STO sensors. Selecting different nanoparticle types so that their magnetic signatures produce distinguishable STO responses would have been an obvious design choice for enabling multiplexed detection of different nucleotide precursors.
Furthermore, the claims merely require determining whether the STO signal corresponds to a first or second frequency. Srimani’s spectral analysis necessarily involves determining the frequency components of the STO signal. As previously explained, spectral analysis inherently determines both frequency and amplitude of spectral components. Thus, Srimani necessarily determines whether STO signals occur at particular frequencies.
Accordingly, the combination of Srimani and Mandell teaches or renders obvious the limitations of claim 1.
Claim 2-7
Claims 2–7 depend from claim 1 and recite various implementations of frequency determination such as Fourier transform processing, frequency-band determination, or threshold comparison. Such signal-processing techniques are well known methods of analyzing oscillator output signals and would have been obvious to a person of ordinary skill in the art implementing the STO signal analysis described by Srimani.
Claim 8
Claim 8 recites detecting frequency using a super-heterodyne circuit. Super-heterodyne circuits are standard RF detection architectures for detecting and measuring oscillator signals and represent a well-known implementation choice for analyzing RF signals produced by oscillators.
Claim 9
Claim 9 recites recording the identity of the nucleotide precursor once detection occurs. Recording detected molecular identities is a routine step in sequencing and molecular detection systems and is inherently performed in sequencing methods.
Accordingly, Applicant’s arguments regarding claims 1–9 are not persuasive.
Claims 10–13
Claim 10 recites detecting whether an STO generates a signal within a specified frequency band to determine whether a magnetic nanoparticle-labeled nucleotide precursor is present.
As discussed above, Srimani teaches detecting magnetic nanoparticles using STO output signals and analyzing those signals in the frequency domain. Monitoring whether an STO generates a signal within a specified frequency band corresponds to determining the spectral characteristics of the oscillator output, which Srimani explicitly performs.
Claims 11–13 add additional sequencing-related features such as super-heterodyne detection and the presence of nucleic acid strands, primers, and polymerase within the fluidic channel. Such sequencing components are well known in nucleic acid sequencing systems and are taught in the prior art references cited in the rejection.
Applicant argues that the Office improperly relied on “standard” or “foundational” molecular biology techniques to supply missing claim limitations and that neither Srimani nor Mandell suggests integrating primer-extension chemistry with STO-based magnetic sensing. Applicant further asserts that the rejection relies on impermissible hindsight under In re Fritch and Metalcraft. The argument is not persuasive.
First, the rejection does not rely solely on the assertion that molecular biology techniques are “routine.” Rather, the rejection relies on specific teachings of the cited references together with the knowledge of one of ordinary skill in the art regarding nucleic acid sequencing techniques.
Srimani teaches a sensing architecture in which spin torque oscillators (STOs) detect magnetic nanoparticles by monitoring perturbations to STO oscillation signals caused by magnetic fields of nearby nanoparticles. Srimani further analyzes the STO output signal using frequency-domain analysis, demonstrating that magnetic nanoparticles can be detected through changes in STO signal characteristics.
Mandell teaches labeling nucleic acid molecules with magnetic nanoparticles for detection and sequencing applications. Mandell explains that magnetic nanoparticle labels attached to nucleotide molecules can be used to identify nucleotide incorporation events.
A person of ordinary skill in the art would have recognized that if nucleotide molecules are labeled with magnetic nanoparticles as taught by Mandell, those nanoparticles could be detected using magnetic nanoparticle detection techniques such as the STO-based sensing architecture described by Srimani. Combining the magnetic nanoparticle labeling approach of Mandell with the magnetic nanoparticle sensing mechanism of Srimani represents a straightforward application of a known detection mechanism to a known labeling technique.
Applicant argues that primer extension chemistry involving polymerase and nucleotide precursors is not disclosed in Srimani. However, the claims merely require that labeled nucleotide precursors, polymerase, and nucleic acid strands be present in the reaction environment. Primer extension using polymerase and nucleotide precursors is a fundamental aspect of sequencing-by-synthesis techniques and would have been understood by a person of ordinary skill in the art seeking to detect nucleotide incorporation events using magnetic nanoparticle labels.
Importantly, the STO sensing mechanism disclosed by Srimani detects magnetic perturbations caused by magnetic nanoparticles, regardless of the biochemical process that brings the nanoparticle near the STO sensor. Thus, incorporating labeled nucleotide precursors involved in primer-extension reactions does not require modification of the STO sensing principle disclosed by Srimani.
Accordingly, the combination of Srimani and Mandell reflects the predictable application of a known magnetic nanoparticle detection technique to labeled nucleotide molecules, which would have been obvious to one of ordinary skill in the art.
Therefore, Applicant’s hindsight argument is not persuasive.
Accordingly, the limitations of claims 10–13 are taught or suggested by the cited references.
Claims 15 and 17-19
Applicant argues that the cited references fail to disclose the specific circuitry recited in claims 15 and 17-19.
The argument is not persuasive.
Claim 15 recites that the means for determining whether an STO is generating an RF signal comprises a super-heterodyne circuit. Super-heterodyne circuits are standard RF detection architectures used to detect oscillator signals and represent a predictable implementation of the signal detection circuitry used in STO sensing systems.
Applicant argues that Srimani does not teach determining whether an STO is generating an RF signal in a specified frequency band and instead detects magnetic nanoparticles through amplitude changes in the oscillator output. Applicant further argues that Srimani does not disclose detecting MNP-induced frequency shifts or performing frequency-band classification as part of analyte detection. The argument is not persuasive.
First, Applicant’s argument is not commensurate with the scope of the claim. Claim 15 recites that the means for determining whether the STO is generating the RF signal comprises a super-heterodyne circuit coupled to the STO. The claim does not require detecting frequency shifts or determining whether the oscillation frequency falls within a particular band. Rather, the claim only requires circuitry configured to determine whether the STO is generating an RF signal.
Srimani discloses spin torque oscillators that generate RF oscillations when biased and further discloses analyzing the STO output signal to detect the presence of magnetic nanoparticles. Because Srimani necessarily measures and analyzes the RF output signal generated by the STO, Srimani inherently determines whether the STO is generating an RF signal.
Second, a super-heterodyne circuit is a well-known RF signal detection architecture used to determine the presence of RF signals generated by oscillators. Such circuits mix an incoming RF signal with a reference signal and process the resulting intermediate frequency signal to detect and analyze the oscillator output. Implementing the signal detection circuitry using a super-heterodyne architecture therefore represents a conventional implementation choice for detecting RF oscillator signals.
A person of ordinary skill in the art implementing the STO sensing system of Srimani would have recognized that the STO generates microwave-frequency RF signals and that conventional RF receiver architectures, including super-heterodyne receivers, are routinely used to detect and analyze such signals. Implementing the determination circuitry using a super-heterodyne circuit therefore represents the predictable use of known RF signal detection techniques to detect the RF signal already produced by the STO in Srimani.
Applicant argues that the rejection improperly relies on “well-known” super-heterodyne receivers to supply the claimed “means for determining,” asserting that Srimani does not disclose mixing the STO output with a reference signal or generating an intermediate frequency. Applicant further argues that importing such circuitry would constitute improper hindsight reconstruction. The argument is not persuasive.
First, the rejection does not rely on importing undisclosed structure solely because it is “well known.” Rather, the rejection recognizes that Srimani discloses a microwave oscillator sensing system whose output must be analyzed to determine whether an RF signal is present within a particular frequency band. Srimani explicitly measures and analyzes the RF output signal of the spin torque oscillator using spectral analysis techniques to detect magnetic nanoparticles. Thus, Srimani already requires circuitry capable of determining the frequency characteristics of the STO output signal.
Super-heterodyne detection circuits are a standard architecture for determining the frequency content of microwave signals, including signals generated by RF oscillators. In such circuits, the oscillator output is mixed with a reference signal to produce an intermediate frequency that can be filtered and analyzed to determine whether the signal lies within a specified frequency band. The use of mixers, reference oscillators, and intermediate-frequency stages for frequency detection of RF oscillator signals was well known in the art long before the priority date.
Under KSR v. Teleflex, it is proper to combine prior art teachings with well-known signal-processing techniques when doing so represents the predictable use of known elements according to their established functions. Here, a person of ordinary skill in the art implementing Srimani’s STO sensing system would have recognized that the STO generates microwave-frequency RF signals and that conventional RF receiver architectures—such as super-heterodyne receivers—are routinely used to detect and analyze such signals. Implementing the “means for determining” using a super-heterodyne circuit therefore represents nothing more than the routine application of a known RF signal-processing architecture to analyze the oscillator signal already produced by Srimani’s device.
Applicant’s argument that such circuitry merely performs “signal conditioning” rather than determination is also not persuasive. In RF receiver systems, the determination of whether a signal exists within a specified frequency band is precisely performed through the mixing, filtering, and intermediate-frequency processing stages of the receiver. These stages enable the detection logic by converting the RF signal to a form suitable for frequency discrimination. Thus, the super-heterodyne circuitry directly performs the claimed function of determining whether the STO is generating a signal within the specified frequency band.
Applicant further argues that Srimani relies on amplitude rather than frequency detection. However, Srimani performs frequency-domain analysis of the STO output signal, which necessarily evaluates the frequency components of the oscillator signal. Spectral analysis inherently involves determining both the frequency of spectral components and the amplitude associated with those frequencies. Therefore, the detection system disclosed by Srimani already evaluates frequency characteristics of the STO signal, and the use of super-heterodyne circuitry represents an obvious implementation choice for performing that analysis.
Accordingly, implementing the signal-analysis circuitry of Srimani using a super-heterodyne receiver architecture would have been a predictable and well-understood design choice for analyzing RF oscillator signals, and Applicant’s arguments are not persuasive.
Claim 17 recites a reference oscillator generating a reference signal. Reference oscillators are commonly used in RF detection circuits and in oscillator signal analysis systems to provide comparison signals for frequency detection.
Claim 18 recites selecting the frequency of the reference signal to match an expected oscillation frequency. Frequency-tunable reference oscillators are a routine feature of RF signal detection circuits used to detect or track oscillator frequencies.
Applicant argues that Srimani does not teach determining whether an STO generates an RF signal within a specific frequency band and instead detects magnetic nanoparticles only through amplitude changes while maintaining oscillator frequency using injection locking. Applicant therefore contends that Srimani does not disclose or suggest modifying its sensing architecture to use frequency-band determination. The argument is not persuasive.
First, Applicant’s characterization of Srimani is overly narrow. Srimani discloses a sensing architecture in which a spin torque oscillator produces an RF signal whose characteristics are analyzed to detect magnetic nanoparticles. The output of the STO is analyzed using spectral techniques (e.g., frequency-domain analysis). Analysis of a signal in the frequency domain necessarily determines the frequencies at which signal components occur as well as their amplitudes. Thus, even when the analysis focuses on amplitude of spectral components, the corresponding frequencies of those components are inherently determined as part of the spectral analysis.
Second, the fact that Srimani discusses injection-locked operation does not teach away from frequency-based analysis. Injection locking is a known technique used to stabilize or control the oscillation frequency of an oscillator. Stabilizing oscillator frequency is commonly used in RF sensing systems to improve signal quality and reduce noise. However, stabilizing a frequency does not preclude monitoring whether the oscillator signal occurs at or near a particular frequency. Rather, frequency stabilization simply establishes an expected oscillation frequency around which signal analysis may be performed.
Claim 18 further recites selecting the frequency of a reference signal to substantially match an expected oscillation frequency of the RF signal. In RF signal detection systems, it is well known to tune or select the frequency of a reference oscillator so that it corresponds to the expected frequency of an oscillator signal to facilitate signal detection or comparison. Such tuning is routinely used in RF receivers and oscillator detection systems.
A person of ordinary skill in the art implementing the STO sensing architecture of Srimani would have recognized that the STO produces microwave-frequency RF signals and that conventional RF signal-analysis circuits commonly employ a tunable reference oscillator whose frequency is selected to correspond to the expected oscillator frequency. Implementing the determination circuitry using such a tunable reference oscillator therefore represents the predictable application of known RF signal-processing techniques to analyze the oscillator signal generated by Srimani’s STO sensor.
Applicant’s argument that Srimani focuses on amplitude does not negate the obviousness of analyzing oscillator frequency. The prior art need not teach the identical detection criterion so long as the modification represents a predictable variation within the skill of the art. Here, selecting the frequency of a reference signal to correspond to the expected oscillator frequency merely reflects a conventional method of analyzing RF oscillator signals.
Accordingly, Applicant’s arguments regarding claim 18 are not persuasive.
Claim 19 recites mixing the STO output signal with a reference signal. Signal mixing is a fundamental operation used in RF receivers, including super-heterodyne receivers, to translate signals to an intermediate frequency for detection.
Notably, the detection architecture described in the prior art detection systems includes RF amplifiers, filters, mixers, and reference oscillators used to process STO signals. For example, the detection circuitry illustrated in the patent cited by Applicant includes such RF detection components.
Accordingly, the circuitry recited in claims 15 and 17-19 represents routine and well-known RF signal-processing components that would have been obvious implementations of the signal-analysis circuitry used to process STO output signals.
Mandell teaches labeling nucleotide molecules with magnetic nanoparticles having different magnetic properties (e.g., par [0065]). Different magnetic nanoparticles inherently produce different magnetic stray fields. Srimani teaches that magnetic fields perturb the oscillation behavior of STO sensors.
A person of ordinary skill in the art would recognize that using nanoparticles with different magnetic properties would predictably produce different perturbations in STO oscillation behavior. Selecting nanoparticle types to generate distinguishable STO responses would therefore represent a predictable design choice to enable multiplexed detection.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/XIAOYUN R XU, Ph.D./ Primary Examiner, Art Unit 1797