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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-17, in the reply filed on March 9, 2026 is acknowledged.
Claim Objections
Claims 10 and 13-15 are objected to because of the following informalities: In claim 10 and 15, the limitation “one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer” should read --- one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, and as a separate layer ---. In claims 13-14, the limitation “one or both of the functional layer or the substrate layer” should read --- one or both of the functional layer and the substrate layer ---. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “a focus sub-system” in claims 9 and 11; and “an imager sub-system” in claim 10.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 9 and 11 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. Claims 9 and 11 recite the limitation "a focus sub-system," however, said limitation fails to comply with written description requirement. The instant specification, as originally filed, discloses a focus sub-system configured to scan the patterned flow cell (see, e.g., Claims 9 and 11; and [0028] of the application publication). The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. Claim limitation “a focus sub-system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the specification is silent as to the structure that comprise the claimed focus sub-system. As such, said limitation fails to comply with the written description requirement.
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 9, 11-12 and 14-16 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.
Regarding claims 9 and 11, claim limitation “focus sub-system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The instant specification, as originally filed, discloses a focus sub-system configured to scan the patterned flow cell (see, e.g., Claims 9 and 11; and [0028] of the application publication). The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. Claim limitation “a focus sub-system” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the specification is silent as to the structure that comprise the claimed focus sub-system. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 12 recites the limitation "the patterned flow cell comprises a layer of deposited material and wherein the plurality of features are lithographically patterned features within the layer" in lines 1-3. However, claim 10 from which claim 12 depends defines the plurality of features as being “formed on one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer.” Therefore, it is unclear whether the layer recited in claim 12 is one of the layers recited earlier in the claim or is an additional layer. Further clarification is requested and appropriate correction is required.
Claim 14 recites the limitation "the plurality of features are formed from a layer" in lines 1-2. However, claim 10 from which claim 14 depends defines the plurality of features as being “formed on one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer.” Therefore, it is unclear whether the layer recited in claim 14 is one of the layers recited earlier in the claim or is an additional layer. Further clarification is requested and appropriate correction is required.
Claim 15 recites the limitation "a second surface of the functional layer opposite the first surface; a surface of the substrate layer, or as a separate layer" in lines 2-3. However, claim 10 from which claim 15 depends already recites “a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer.” Therefore, it is unclear whether the second surface of the functional layer opposite the first surface, the surface of the substrate layer, or the separate layer, recited in claim 15 is referring to the ones previously recited in the claim or are additional elements. Further clarification is requested and appropriate correction is required.
Claim 16 recites the limitation "the plurality of features and the plurality of additional features are lithographically patterned within a layer of deposited material have a different thickness than a remainder of the layer" in lines 1-3. However, claim 10 from which claim 16 depends defines the plurality of features as being “formed on one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer.” Therefore, it is unclear whether the layer recited in claim 16 is one of the layers recited earlier in the claim or is an additional layer. Further clarification is requested and appropriate correction is required.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowen et al. (US 2017/0274374; hereinafter “Bowen”).
Regarding claim 1, Bowen discloses a patterned flow cell, comprising: a functional layer (FIG. 2: layer comprising a first plurality of wells and a second plurality of wells; [0018]); a first plurality of sample sites formed in the functional layer (FIG. 2: a first plurality of wells having a first depth formed on a layer; [0018]), wherein the first plurality of sample sites are arranged in a periodic pattern such that regions of the first plurality of sample sites are spaced apart at periodic intervals (see FIG. 2), wherein the first plurality of sample sites have a first value for a geometric parameter characterizing each sample site of the first plurality of sample sites (FIG. 2: first plurality of wells are arranged on the layer at a first depth; [0018]); and a second plurality of sample sites formed in the functional layer (FIG. 2: a second plurality of wells having a second depth formed on a layer; [0018]), wherein regions of the second plurality of sample sites are arranged in the periodic pattern alternating with regions of the first plurality of sample sites (FIG. 3: first plurality of wells alternating with the second plurality of wells along the layer), wherein the second plurality of sample sites have a second value for the geometric parameter characterizing each sample site of the second plurality of sample sites (FIG. 2: second plurality of wells are arranged on the layer at a second depth; [0018]).
Regarding claim 2, Bowen further discloses a substrate layer adjacent to the functional layer (see FIG. 2: layer below the functional layer).
Therefore, Bowen meets and anticipates the limitations set forth in claims 1-2.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bowen et al. (US 10,682,829; hereinafter “’829”).
Regarding claim 1, ‘829 discloses a patterned flow cell, comprising: a functional layer (FIG. 1A: layer 103; col. 10, ll. 39-44); a first plurality of sample sites formed in the functional layer (a plurality of micro-scale or nano-scale patterns, or combinations thereof; col. 10, ll. 42-44), wherein the first plurality
of sample sites are arranged in a periodic pattern such that regions of the first plurality of sample sites are spaced apart at periodic intervals (see FIG. 1A), wherein the first plurality of sample sites have a first value for a geometric parameter characterizing each sample site of the first plurality of sample sites (plurality of micro-scale or nano-scale patterns, or combinations thereof, include geometric parameter (depth and diameter); col. 10, ll. 48-52); and a second plurality of sample sites formed in the functional layer (a plurality of micro-scale or nano-scale patterns, or combinations thereof; col. 10, ll. 42-44), wherein regions of the
second plurality of sample sites are arranged in the periodic pattern alternating with regions of
the first plurality of sample sites (see FIG. 1A), wherein the second plurality of sample sites have a second value for the geometric parameter characterizing each sample site of the second plurality of sample sites (plurality of micro-scale or nano-scale patterns, or combinations thereof, include geometric parameter (depth and diameter); col. 10, ll. 48-52).
Regarding claim 2, ‘829 further discloses a substrate layer adjacent to the functional layer (see FIG. 1A: layer 102).
Regarding claim 3, ‘829 further discloses wherein the first plurality of sample sites
and the second plurality of sample sites each comprise nanowells and the geometric parameter
comprises depth or diameter (plurality of micro-scale or nano-scale patterns, or combinations thereof, include geometric parameter (depth and diameter); col. 10, ll. 48-52).
Regarding claim 4, ‘829 further discloses wherein the first plurality of sample sites have a third value for an additional geometric parameter characterizing each sample site of the first plurality of sample sites and the second plurality of sample sites have a fourth value for the additional geometric parameter characterizing each sample site of the second plurality of sample sites (plurality of micro-scale or nano-scale patterns, or combinations thereof, include geometric parameter (depth and diameter); col. 10, ll. 48-52).
Regarding claim 5, ‘829 further discloses wherein the geometric parameter comprises
depth and the additional geometric parameter comprises diameter (plurality of micro-scale or nano-scale patterns, or combinations thereof, include geometric parameter (depth and diameter); col. 10, ll. 48-52).
Regarding claim 7, regarding the limitation “a reflectance for the first plurality
of sample sites and the second plurality of sample sites differs due to a difference between the
first value and the second value for the geometric parameter,” the first plurality of sample sites and the second plurality of sample sites of ‘829 are structurally the same as the instant the first plurality of sample sites and the second plurality of sample sites, and thus considered to meet said limitation.
Regarding claim 8, regarding the limitation “wherein the regions of the first plurality of
sample sites are spaced apart at periodic intervals in a scanning direction associated with the
flow cell,” the regions of the first plurality of sample sites of ‘829 are structurally the same as the instant the regions of the first plurality of sample sites, and thus considered to meet said limitation.
Regarding claim 9, regarding the limitation “wherein the periodic intervals are less than
a diameter or width of one or more beams emitted by a focus sub-system configured to scan the patterned flow cell,” the periodic intervals of ‘829 are structurally the same as the instant the periodic intervals and thus considered to meet said limitation.
Therefore, ‘829 meets and anticipates the limitations set forth in claims 1-5 and 7-9.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 10-11, 13-15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over by ‘829 (US 10,682,829) in view of Dickenson et al (US 2002/0102578; hereinafter “Dickinson”).
Regarding claim 10, ‘829 discloses a patterned flow cell, comprising: a substrate layer(FIG. 1A: layer 102); a functional layer proximate to the substrate layer (FIG. 1A: layer 103; col. 10, ll. 39-44); a plurality of sample sites formed on a first surface of the functional layer (a plurality of micro-scale or nano-scale patterns, or combinations thereof; col. 10, ll. 42-44). ‘829 does not explicitly disclose a plurality of features formed on one or more of: a second surface of the functional layer opposite the first surface, a surface of the substrate layer, or as a separate layer. However, ‘829 disclose wherein the patterned flow cells incudes a plurality of layers including a separate layer other than the substrate and functional layers (FIG. 1A: 101). Dickinson discloses a pattern flow cell ([0179]) comprising a functional layer ([0053]), and plurality of features formed on a separate layer, and wherein the plurality of features reflect or fluoresce in the presence of a wavelength ([0057]-[0058], [0102]). In view of Dickinson, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the separate layer of ‘829 with the separate layer of Dickinson to arrive at the claimed invention. One of ordinary skill in the art would have made said modification for the purpose of enhancing signal collection for the plurality of sample sites as disclosed by Dickinson ([0058]).
Regarding claim 11, regarding the limitation “wherein the periodic intervals are less than a diameter or width of one or more beams emitted by a focus sub-system configured to scan the patterned flow cell,” the periodic intervals of modified ‘829 are structurally the same as the instant the periodic intervals and thus considered to meet said limitation. Regarding the limitation “wherein the features of the plurality of features are spaced apart at periodic intervals in a scanning direction associated with the flow cell,” the features of modified ‘829 correspond to the plurality of sample sites and thus considered to be spaced apart at periodic intervals in a scanning direction associated with the flow cell. Regarding the limitation “wherein the plurality of features reflect or fluoresce in the presence of a wavelength different than that used by an imager sub-system used to scan the plurality of sample sites during a scan operation,” the plurality of features of modified ‘829 is structurally the same as the instant plurality of features (see above), and thus considered to meet said limitation.
Regarding claim 13, modified ‘829 does not explicitly disclose wherein the plurality of features have a different refractive index than one or both of the functional layer or the substrate layer with respect to the near infrared emissions. Dickinson further discloses wherein the thickness of the layers of patterned flow cell can be varied according to desired optical properties of the pattered flow cell ([0053], [0057]). The optical properties of the layers of the patterned flow cell can be selected according to optical properties (e.g., type of radiation to be detected; [0057]). In view of Dickinson, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the layers of the patterned flow cell of modified ‘829 to have the claimed optical properties and thickness, because Dickinson discloses that the layers of the patterned flow cell can be selected according to the desired optical properties ([0053], [0057], [0102]).
Regarding claim 14, modified ‘829 does not explicitly disclose wherein the plurality of features are formed from a layer of a material with a refractive index different than one or both of the functional layer or the substrate layer.
Dickinson further discloses wherein the thickness of the layers of patterned flow cell can be varied according to desired optical properties of the pattered flow cell ([0053], [0057]). The optical properties of the layers of the patterned flow cell can be selected according to optical properties (e.g., type of radiation to be detected; [0057]). In view of Dickinson, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the layers of the patterned flow cell of modified ‘829 to have the claimed optical properties, because Dickinson discloses that the layers of the patterned flow cell can be selected according to the desired optical properties ([0053], [0057], [0102]).
Regarding claim 15, modified ‘829 does not explicitly disclose an additional plurality
of features formed on one or more of: a second surface of the functional layer opposite the first surface; a surface of the substrate layer, or as a separate layer. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified duplicated the plurality of features of modified ‘829, since it has been held that a mere duplication of working parts of a device involves only routine skill in the art (see MPEP § 2144.04 VI. B.). Modified ‘829 does not explicitly disclose wherein the features of the additional plurality run continuously or intermittently in the scanning direction associated with the flow cell and are spaced apart in a cross-sample direction perpendicular to the scanning direction and wherein the plurality of additional features reflect or fluoresce in the presence of a near infrared energy emission. However, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have rearranged the additional plurality of features of ‘829, since it has been held that a mere rearrangement of element without modification of the operation of the device involves only routine skill in the art (see MPEP § 2144.04 VI. C.).
Regarding claim 17, modified ‘829 does not explicitly disclose wherein the plurality of features comprise a resin having a different refractive index than the substrate.
Dickinson further discloses wherein the thickness of the layers of patterned flow cell can be varied according to desired optical properties of the pattered flow cell ([0053], [0057]). The optical properties of the layers of the patterned flow cell can be selected according to optical properties (e.g., type of radiation to be detected; [0057]). In view of Dickinson, it would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the layers of the patterned flow cell of modified ‘829 to have the claimed optical properties, because Dickinson discloses that the layers of the patterned flow cell can be selected according to the desired optical properties ([0053], [0057], [0102]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIBAN M HASSAN whose telephone number is (571)270-7636. The examiner can normally be reached on 8:30 AM - 5:00 PM.
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/LIBAN M HASSAN/Primary Examiner, Art Unit 1799
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