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 .
Status of Claims
Claims 1-13 remain pending in the application.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Republic of Korea on 08/05/2022. It is noted, however, that applicant has not filed a certified copy of the KR10-2022-0097738 application as required by 37 CFR 1.55.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: nanogaps 112. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 measurement unit and a determination unit in claim 5.
A measurement unit and a determination unit in claim 11
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 Objections
Claims 1-3, 8-10 are objected to because of the following informalities:
Claim 1 recites “a metamaterial array that includes a metamaterial and amplifies electromagnetic wave of a specific frequency” on lines 2-3 where this appears to be worded awkwardly.
The instant specification on page 6 paragraph 3 describes a metamaterial that amplifies a signal of a specific band of electromagnetic waves.
Therefore, it is suggested to amend lines 2-3 to recite “a metamaterial array that includes a metamaterial, the metamaterial amplifies an electromagnetic wave of a specific frequency” or similar.
Lines 4-5 recites “an electromagnetic wave irradiation unit that irradiates terahertz electromagnetic wave toward the metamaterial array” where it sounds as though a word or phrase is missing.
One suggested amendment is “an electromagnetic wave irradiation unit that irradiates a terahertz electromagnetic wave toward the metamaterial array”
Claims 2 and 9 recites “wherein the some amino acids are part of amino acid sequence” where it sounds as though a word or phrase is missing. One suggested amendment is “wherein the some amino acids are part of an amino acid sequence”
Claim 8 similarly recites “a metamaterial array that includes a metamaterial and amplifies electromagnetic wave of a specific frequency” on lines 2-3 and “an electromagnetic wave irradiation unit that irradiates terahertz electromagnetic wave toward the metamaterial array” on lines 4-5, where similar suggested amendments from 1 apply, see above.
Further, line 1 recites “SRAS-CoV-2” where it is understood that it should be “SARS”
Claims 3 and 10 recite “acides” where this is understood to be a typo and should instead be “acids”
Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-6, 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seo (US-2017/0081695-A1).
Regarding claim 1, Seo teaches a device, comprising:
a metamaterial array (sensing chip 1) that includes a metamaterial (meta unit 11) and amplifies electromagnetic wave of a specific frequency ([0026] see meta unit 11 in which a pattern is formed to amplify a frequency corresponding to an absorption frequency of an avian influenza virus of interest, Figures 1, 2); and
an electromagnetic wave irradiation unit (irradiator) that irradiates terahertz electromagnetic wave toward the metamaterial array (1) ([0028], [0031]),
The limitations “for determining a coronavirus mutation”, “amplifies electromagnetic wave of a specific frequency”, “that irradiates terahertz electromagnetic wave toward the metamaterial array”, and “wherein the metamaterial array amplifies some amino acids constituting a coronavirus (Cov).” are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of determining a coronavirus mutation, amplifying an electromagnetic wave of a specific frequency, irradiating terahertz electromagnetic wave toward the metamaterial array, and amplifying some amino acids constituting a coronavirus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
With regards to amplifying some amino acids constituting a coronavirus, please see [0026] which describes amplifying a frequency corresponding to an absorption frequency of an avian influenza virus, and [0027] that the target biological sample in a liquid state can be selectively specified for subtypes among various avian influenza viruses. It is therefore understood that Seo would be capable of amplifying amino acids.
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on some amino acids constituting a coronavirus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
Additionally, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 2, Seo teaches the device of claim 1.
The limitations of claim 2 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of amplifying some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
Further, please note that the amino acids have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 3, Seo teaches the device of claim 2.
The limitations of claim 3 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of amplifying some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus, where the some amino acids include leucine and asparagine. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus, where the some amino acids include leucine and asparagine. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
Further, please note that the amino acids have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 4, Seo teaches the device of claim 1.
The limitations of claim 4 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of having a sample containing the coronavirus uniformly applied to a surface of the metamaterial. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on a sample containing the coronavirus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
See [0031] which describes that sample is loaded on the meta unit 11.
Regarding claim 5, Seo teaches the device of claim 1. Seo further teaches further comprising:
a measurement unit that measures one or more measurement factors selected from the group consisting of a frequency shift and a transmittance of the irradiated electromagnetic wave ([0031]); and
a determination unit that determines a mutation of the based on the measured measurement factor ([0031]).
From [0031], the detector measures the transmittance or frequency change of the terawaves passing through the sensing chip 1 to specify subtypes of avian influenza viruses, and determines concentrations of the specified avian influenza viruses. Therefore, the detector described will have both a measurement unit as well as a determination unit.
Further, the limitations of claim 5 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of measuring one or more measurement factors selected from the group consisting of a frequency shift and a transmittance of the irradiated electromagnetic wave and determining a mutation of the coronavirus based on the measured measurement factor. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 6, Seo teaches the device of claim 1. Seo further teaches wherein a surface of the metamaterial array (1) includes a nanogap (pattern 111) to amplify the electromagnetic wave of a specific frequency ([0030] see pattern 111 for selectively amplifying a frequency of interest, the slits are in the range of width 10 nm to 1 µm, length from 10 µm to 1 mm, with gaps of 1 nm to 1 mm in both widthwise direction and lengthwise direction, Figure 2).
Regarding claim 8, Seo teaches a device, comprising:
a metamaterial array (sensing chip 1) that includes a metamaterial (meta unit 11) and amplifies electromagnetic wave of a specific frequency ([0026] see meta unit 11 in which a pattern is formed to amplify a frequency corresponding to an absorption frequency of an avian influenza virus of interest, Figures 1, 2); and
an electromagnetic wave irradiation unit (irradiator) that irradiates terahertz electromagnetic wave toward the metamaterial array (1) ([0028], [0031]),
a biological sample separated from an object is uniformly applied to a surface of the metamaterial (11) ([0031] see sample is loaded on the meta unit 11).
The limitations “for diagnosing a coronavirus disease-19(SRAS-CoV-2)”, “amplifies electromagnetic wave of a specific frequency”, “that irradiates terahertz electromagnetic wave toward the metamaterial array”, “amplifies some amino acids constituting a coronavirus (Cov)” are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of diagnosing a coronavirus disease, amplifying an electromagnetic wave of a specific frequency, irradiating terahertz electromagnetic wave toward the metamaterial array, and amplifying some amino acids constituting a coronavirus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
With regards to amplifying some amino acids constituting a coronavirus, please see [0026] which describes amplifying a frequency corresponding to an absorption frequency of an avian influenza virus, and [0027] that the target biological sample in a liquid state can be selectively specified for subtypes among various avian influenza viruses. It is therefore understood that Seo would be capable of amplifying amino acids.
Further, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 9, Seo teaches the device of claim 8.
The limitations of claim 9 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of amplifying some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
Further, please note that the amino acids have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 10, Seo teaches the device of claim 9.
The limitations of claim 10 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of amplifying some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus, where the some amino acids include leucine and asparagine. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, these limitations are directed to the material worked upon by the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of working on some amino acids constituting a coronavirus, where the some amino acids are part of amino acid sequence constituting a receptor binding protein (RBC) of a spike (S) region of the corona virus, where the some amino acids include leucine and asparagine. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2115).
Further, please note that the amino acids have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 11, Seo teaches the device of claim 8. Seo further teaches further comprising:
a measurement unit that measures one or more measurement factors selected from the group consisting of a frequency shift and a transmittance of the irradiated electromagnetic wave ([0031]); and
a determination unit that determines a mutation based on the measured measurement factor,
From [0031], the detector measures the transmittance or frequency change of the terawaves passing through the sensing chip 1 to specify subtypes of avian influenza viruses, and determines concentrations of the specified avian influenza viruses. Therefore, the detector described will have both a measurement unit as well as a determination unit.
Further, the limitations of claim 11 are directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by Seo and the apparatus of Seo is capable of measuring one or more measurement factors selected from the group consisting of a frequency shift and a transmittance of the irradiated electromagnetic wave and determining a mutation of the coronavirus based on the measured measurement factor, and determining a coronavirus disease-19 diagnoses whether or not the object is infected with coronavirus disease-19. As such, it is deemed that the claimed apparatus is not differentiated from the apparatus of Seo (see MPEP §2114).
Further, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and are therefore not a part of the claimed device.
Regarding claim 12, Seo teaches the device of claim 8. Seo further teaches wherein a surface of the metamaterial array (1) includes a nanogap to amplify the electromagnetic wave of a specific frequency ([0030] see pattern 111 for selectively amplifying a frequency of interest, the slits are in the range of width 10 nm to 1 µm, length from 10 µm to 1 mm, with gaps of 1 nm to 1 mm in both widthwise direction and lengthwise direction, Figure 2).
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.
Claim(s) 7, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seo (US-2017/0081695-A1) in view of Seo (US-10288560-B1) herein Seo 2019.
Regarding claim 7, Seo teaches the device of claim 6. While Seo does teach that the sensing chip 1 may be designed to amplify a specific frequency by adjusting the spec (shape, size, and gap of the slits) of pattern 111 to set the resonance transmitting frequencies (Seo; [0030]) it is unclear if this would be a natural vibration mode.
In the analogous art of observing the conformational change in a protein, Seo 2019 teaches a sensing element (Seo 2019; column 4 lines 19-26).
Specifically, Seo 2019 teaches where the sensing element 120 includes a substrate 121 and a film 122, where film 122 is subjected to intaglio patterning such that an electromagnetic wave of a specific frequency is amplified (Seo 2019; column 4 lines 35-39). Further, Seo 2019 describes that the slot in film 122 may be adjusted in width, length, height, and distances between adjacent slots so that resonance occurs at a frequency in the natural vibration mode of a target protein in which the conformational change is observed (Seo 2019; column 4 lines 43-48, Figure 2). Additionally, Seo 2019 describes that the electromagnetic wave irradiation unit 130 corresponds to terahertz (Seo 2019; column 4 lines 52-56).
It would have been obvious to one skilled in the art to adjust the slits of Seo with respect to one or more selected from the group consisting of a length, a width, and thickness as taught by Seo 2019 such that resonance occurs at a frequency of a natural vibration mode because Seo 2019 teaches it is effective to adjust these parameters depending on the target protein to be analyzed (Seo 2019; column 4 lines 43-48).
Further, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and therefore are not part of the claimed device.
Regarding claim 13, Seo teaches the device of claim 12. While Seo does teach that the sensing chip 1 may be designed to amplify a specific frequency by adjusting the spec (shape, size, and gap of the slits) of pattern 111 to set the resonance transmitting frequencies (Seo; [0030]) it is unclear if this would be a natural vibration mode.
In the analogous art of observing the conformational change in a protein, Seo 2019 teaches a sensing element (Seo 2019; column 4 lines 19-26).
Specifically, Seo 2019 teaches where the sensing element 120 includes a substrate 121 and a film 122, where film 122 is subjected to intaglio patterning such that an electromagnetic wave of a specific frequency is amplified (Seo 2019; column 4 lines 35-39). Further, Seo 2019 describes that the slot in film 122 may be adjusted in width, length, height, and distances between adjacent slots so that resonance occurs at a frequency in the natural vibration mode of a target protein in which the conformational change is observed (Seo 2019; column 4 lines 43-48, Figure 2). Additionally, Seo 2019 describes that the electromagnetic wave irradiation unit 130 corresponds to terahertz (Seo 2019; column 4 lines 52-56).
It would have been obvious to one skilled in the art to adjust the slits of Seo with respect to one or more selected from the group consisting of a length, a width, and thickness as taught by Seo 2019 such that resonance occurs at a frequency of a natural vibration mode because Seo 2019 teaches it is effective to adjust these parameters depending on the target protein to be analyzed (Seo 2019; column 4 lines 43-48).
Further, please note that the amino acids constituting a coronavirus have not been positively recited in the claim, and therefore are not part of the claimed device.
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4 of U.S. Patent No. 11,175,186. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and reference claims are directed to a metamaterial array. Further, the reference claim is directed to an imagining beam where reference claim 4 describes the imaging beam is in a form of a terahertz wave. Therefore the imaging beam providing unit will read on the electromagnetic wave irradiation unit of instant claim 1.
Additionally, the limitation “wherein the metamaterial array amplifies some amino acids constituting a coronavirus (Cov).” is directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by the reference patent and the reference patent is capable of amplifying some amino acids constituting a coronavirus.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,703,442. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 is directed to a metamaterial array and an electromagnetic wave irradiation unit. Reference claim 1 is directed to a sensing substrate to capture particles that includes a base substrate and a particle capture structure layer where the particle capture structure layer has a plurality of slits for focusing the terahertz electromagnetic waves, and a terahertz sensor to emit terahertz electromagnetic waves to the sensing substrate.
Applicants' attention is drawn to MPEP 804 where it is disclosed that “the specification can be used as a dictionary to learn the meaning of a term in a patent claim.” Further, those portions of the specification which provide support for the patent claims may also be examined and considered when addressing the issue of whether a claim in an application defines an obvious variation of an invention claimed in the patent. In re Vogel, 422 F.2d 438,164 USPQ 619,622 (CCPA 1970).
Consistent with the above portion of the MPEP, attention is drawn to column 4 lines 21-27 which discloses the particle capture structure layer itself may be referred to as a metamaterial. Therefore, it would have been obvious to one of ordinary skill in the art that the particle capture structure layer may be considered a metamaterial array.
Additionally, the limitation “wherein the metamaterial array amplifies some amino acids constituting a coronavirus (Cov).” is directed to the function of the apparatus and/or the manner of operating the apparatus, all the structural limitations of the claim has been disclosed by the reference patent and the reference patent is capable of amplifying some amino acids constituting a coronavirus.
Other References Cited
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Barychev (US-2019/0236332-A1) teaches a terahertz signal source configured for generating a terahertz signal at a plurality of frequencies and a detector configured to detect at least part of the terahertz signal having interacted with a seed at each of the plurality of frequencies, where specific amino acids exhibit specific absorption and/or reflection at specific frequencies, examples of amino acids include isoleucine, glutamic acid, leucine, glycine, tyrosine, histidine and their combinations (Barychev; [0048]).
Seo (US-2017/0079563-A1) teaches a method and device for sensing sugars using terahertz electromagnetic waves (Seo; abstract).
Russell (US-2023/0149536-A1) teaches where SARS-CoV-2 S glycoprotein derivative or fragments thereof differs in amino acid sequence from a reference peptide or polypeptide by the insertion, deletion and/or substitution of one or more amino acids but retains at least one biological activity of such reference peptide or polypeptide, where examples of substitution include a tyrosine changed to an asparagine and a phenylalanine changed to a leucine (Russell; [0209]).
Muerhoff (US-2023/0258638-A1) teaches where at least one type of a first specific binding partner is a receptor binding domain of a spike protein or variant thereof from SARS-CoV-2, where the variant of the RBD of a spike protein could be replacing lysine with asparagine (Muerhoff; [0036]).
Seo (US-2019/0204215-A1) describes a sensing devices configured to amplify electromagnetic waves of a specific frequency and a squeegee configured to concentrate a target material inside a slot formed in the sensing device (Seo; abstract).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA LYLE whose telephone number is (571)272-9856. The examiner can normally be reached 8:30-5:00 M-Th.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at (571)272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/S.Y.L./Examiner, Art Unit 1796
/MELVIN C. MAYES/Supervisory Patent Examiner, Art Unit 1759