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 .
DETAILED ACTION
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 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.
Response to Restriction/Election
Applicant’s election of without traverse of Group I, claims 1-19, in response to restriction requirement is acknowledged.
Therefore, claim 20 is withdrawn from further consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03. Applicants preserve their right to file a divisional on the non-elected subject matter.
Status of the claims
Claims 1-19 are examined on merits in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a light emitting device configured to provide an excitation light to the sensing device”. The claim also recites “light transmitting element above the lower polarizer”. First, it is unclear as to whether the “light transmitting element” and the “light transmitting device” are of the same structure having the same functional property or are different. If they are different, how they are different from each other, structurally and functionally? Furthermore, the position of the light emitting device with respect to different component of the sensing device is unclear. The recitation “a light emitting device configured to provide an excitation light to the sensing device”, does not provide any direction or provide any clear indication wherein in the sensing device the excitation light is provided by the emitting device as the sensing device comprises different components at different position and different arrangements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hsieh et al (US 12515220).
In regards to claims 1-11 and 14-19, Hsieh teaches bio-chip comprising set of polarizing array comprising sub-polarizing unit, wherein the bio-chip further includes reaction sites. Hsieh teaches bio bio-chip device comprising a sensing region, polarizers having first and second sub-polarizers, configuration to provide polarized excitation lights (claims 1-20). Hsieh teaches that the first polarization angle and the second polarization angle can be different including 90 degrees (claims 11, 19 and 20; columns 13-14). Hsieh teaches various arrangements of the polarizers (claims 1-20) and teaches configuration to receive polarized excitation lights (claim 14). Hsieh also teaches utilizing filter elements, photodetectors, and sub-excitation light source (claims 12-13, and 18).
Therefore, since the basic concept to providing polarized excitation light to bio-chip utilizing plurality of sub-polarizers in different arrangements have been disclosed by Hsieh, the various arrangements of the polarizers to configure polarization direction and providing different polarized excitation and various modifications as claimed in claim 1-11 and 14-19 are obvious to one of ordinary skilled in the art and are within the purview of one of ordinary skilled in the art. In regards to refractive index of the imaging medium and the refractive index of the light transmitting element recited in claims 12 and 13, are considered as routine optimization which is within the purview of one of ordinary skilled in the art.
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.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12209964. Although the claims at issue are not identical, they are not patentably distinct from each other. In regards to claims 1-11, 14-19, a sensing device comprising a sensing region, polarizers having first and second sub-polarizers, configuration to provide polarized excitation lights are disclosed in claims 1-11 of US patent ‘964. Claims of US patent ‘964 discloses that the first polarization angle and the second polarization angle can be 90 degrees (see claims 12-13). US patent teaches various arrangements of the polarizers (claims 3-6, 9-13, and 20) and teaches configuration to direct the polarized excitation lights to bio-chip (claim 16). US patent ‘964 also teaches utilizing filter elements, photodetectors, and sub-excitation light source (claims 14-14).
Therefore, since the basic concept to providing polarized excitation light to bio-chip utilizing plurality of sub-polarizers in different arrangements have been disclosed by the claims of US patent ‘964, the various arrangements of the polarizers to configure polarization direction and providing different polarized excitation and various modifications as claimed in claim 1-11 and 14-19 are obvious to one of ordinary skilled in the art and are within the purview of one of ordinary skilled in the art. In regards to refractive index of the imaging medium and the refractive index of the light transmitting element recited in claims 12 and 13, are considered as routine optimization which is withing the purview of one of ordinary skilled in the art.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12504376. Although the claims at issue are not identical, they are not patentably distinct from each other. In regards to claims 1-11, 14-19, a bio-detection device comprising a sensing region, polarizers having first and second sub-polarizers, configuration to provide polarized excitation lights are disclosed in claims 1-20 of US patent ‘376. Claims of US patent ‘376 discloses that the first polarization angle and the second polarization angle can be 90 degrees (see claims 1, 16 and 18). US patent teaches various arrangements of the polarizers (claims 1-20) and teaches configuration to receive polarized excitation lights (claim 11). US patent ‘376 also teaches utilizing filter elements, photodetectors, and sub-excitation light source (claims 8-14).
Therefore, since the basic concept to providing polarized excitation light to bio-chip utilizing plurality of sub-polarizers in different arrangements have been disclosed by the claims of US patent ‘376, the various arrangements of the polarizers to configure polarization direction and providing different polarized excitation and various modifications as claimed in claim 1-11 and 14-19 are obvious to one of ordinary skilled in the art and are within the purview of one of ordinary skilled in the art. In regards to refractive index of the imaging medium and the refractive index of the light transmitting element recited in claims 12 and 13, are considered as routine optimization which is withing the purview of one of ordinary skilled in the art.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No.12515220. Although the claims at issue are not identical, they are not patentably distinct from each other. In regards to claims 1-11, 14-19, a bio-detection device comprising a sensing region, polarizers having first and second sub-polarizers, configuration to provide polarized excitation lights are disclosed in claims 1-20 of US patent ‘220. Claims of US patent ‘220 teaches that the first polarization angle and the second polarization angle can be different including 90 degrees (see claims 11, 19 and 20). US patent ‘220 teaches various arrangements of the polarizers (claims 1-20) and teaches configuration to receive polarized excitation lights (claim 14). US patent ‘376 also teaches utilizing filter elements, photodetectors, and sub-excitation light source (claims 12-13, and 18).
Therefore, since the basic concept to providing polarized excitation light to bio-chip utilizing plurality of sub-polarizers in different arrangements have been disclosed by the claims of US patent ‘220, the various arrangements of the polarizers to configure polarization direction and providing different polarized excitation and various modifications as claimed in claim 1-11 and 14-19 are obvious to one of ordinary skilled in the art and are within the purview of one of ordinary skilled in the art. In regards to refractive index of the imaging medium and the refractive index of the light transmitting element recited in claims 12 and 13, are considered as routine optimization which is withing the purview of one of ordinary skilled in the art.
Conclusion
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/SHAFIQUL HAQ/Primary Examiner, Art Unit 1678
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