Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
Reissue: Non-Final Rejection
Status of the Claims
On 04/30/2019 US Patent 10,271,780 issued to Van Duyne et al. with claims 1-20. Claims 1-20 are currently pending and are the subject of this Office Action. This is the first Office Action on the merits of the claims in reissue Application No. 18/365,709.
Official Gazette Publication
The Official Gazette (O.G.) publication date for this reissue application was 03/26/2024.
Maintenance Fees
Applicant is reminded of the requirement to pay all applicable maintenance fees on the original patent. See MPEP § 1415.01.
Ongoing Duty To Disclose
Applicant(s) is/are reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent 10,271,780 is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Information Disclosure Statement
References lined-through on the information disclosure statement(s) were not considered because they were not provided.
None of the references listed on the IDS(s) in the application(s) to which this application claims benefit (i.e., the underlying application) will appear on the face of a patent issuing from this application unless they are properly listed on an IDS in this application. See MPEP § 1406.
Should applicants wish to ensure that all of the references which were cited in the original patent are considered and cited in the reissue application, an information disclosure statement (IDS) in compliance with 37 CFR1.97 and 1.98 should be filed in the reissue application (including copies of each foreign patent and NPL documents).
Specification Objections
Claim 16 is objected to because of the following informalities: the word "devices" (plural) should be "device" (singular) for proper grammar and consistency with claims 13 and 15.
Claim Rejections - 35 USC § 112(b) or (pre-AIA ) 35 USC § 112 (2nd Par.)
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.
Claims 3, 9, 17, and 18 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 pre-AIA the applicant regards as the invention.
A. Claim 3 recites the limitation "said plurality of nanobiosensors" in lines 3-4 of the claim. There is insufficient antecedent basis for this limitation in the claim as no "plurality of nanobiosensors" is recited in claim 1 or earlier in claim 3. See MPEP § 2173.05(e).
B. Claim 9 recites the limitation "said surface" in lines 2-3 of the claim. There is insufficient antecedent basis for this limitation in the claim as no "surface" is recited in claim 1 or earlier in claim 9. See MPEP § 2173.05(e).
C. Claim 17 recites the limitation "said surface" in line 3 of the claim. There is insufficient antecedent basis for this limitation in the claim as no "surface" (of the metal film) is recited in claim 13 or earlier in claim 17. See MPEP § 2173.05(e).
D. Claim 18 recites the limitation "said plurality of nanobiosensors" in lines 3-4 of the claim. There is insufficient antecedent basis for this limitation in the claim as no "plurality of nanobiosensors" is recited in claim 13 or earlier in claim 18. See MPEP § 2173.05(e).
Conclusion
Claims 3, 9, 17, and 18 are rejected; claim 16 is objected to. Claims 1, 2, 4-8, 10-15, 19, and 20 are allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin S Orwig whose telephone number is (571)270-5869. The examiner can normally be reached Mon.-Fri. 7AM-4PM (with alternate Fridays off). If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached Mon.-Fri. at (571)272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of applications may be obtained from Patent Center. Patent Center is available to registered users regarding unpublished application information. To file and manage patent submissions, visit: https://patentcenter.uspto.gov and for more information visit https://www.uspto.gov/patents/apply/patent-center and https://www.uspto.gov/patents/docx. The fax number for the organization where this application is assigned is (571) 273-8300. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197. If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 or (571) 272-1000.
/Kevin S Orwig/
Patent Reexamination Specialist, Art Unit 3991
Conferees:
/LEE E SANDERSON/Reexamination Specialist, Art Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991
Prosecution Insights