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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim 1-4, drawn to a kit for detecting wheat gluten in food, classified in G01N 21/01.
II. Claim 5-11, drawn to a method of detecting wheat gluten in food, classified in G01N 21/658.
Inventions I and II are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the method of detecting wheat gluten in can be done with another apparatus, such as a kit with different nanoparticles.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions are classified in different classes/subclasses and drawn towards different statutory categories of invention and therefore search would be burdensome were the examiner to search both inventions.
Applicant is advised that the reply to this requirement to be complete must include (a) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Gokalp Bayramoglu on 03/10/2026 a provisional election was made with traverse to prosecute Claims 1-4. Affirmation of this election must be made by applicant in replying to this Office action. Claims 5-11 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(it).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 non-obviousness.
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 1, 3, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Weng et al. (Chinese Application No. CN202110159773A, see English translation) in view of Konig et al. (US 20210140953).
Regarding claim 1, Weng teaches a gold nanorod combined with aptamers (“gold nanorods with molecular probes”, pg 10-11, paragraph n0047) and an aptamer complementary chain (“nucleic acid probes”, page 11, paragraph n0045) by self-assembly to identity and detect biological molecules (pg 10-11, paragraph n0047).
Weng does not explicitly teach the gold nanorods as nanorod dimers.
However, Konig teaches gold nanoparticles of various shapes (para 0021), and further teaches providing the gold nanoparticles as dimers, for the benefit of permitting just one bright mode and reducing complexity in result interpretation (para 0008). Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the gold nanorods of Weng as gold nanorod dimers, as taught by Konic, for the benefit of permitting just one bright mode and reducing complexity in result interpretation.
Weng also does not teach detection by Raman spectroscopy on a quartz sheet.
However, Konig further teaches that gold nanoparticle dimers (paragraph 0036) can be detected through Raman with the combination of a Raman-active molecule (paragraph 0077) which can be analyzed on a quartz sheet (paragraph 0219) for the benefit of very high sensitivity (paragraph 0003). Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use Raman spectroscopy in the kit of the prior art combination above to detect gold nanorod dimers, as taught by Konig, for the benefit of detection at a high sensitivity.
Regarding Claim 3, Weng teaches that a preferably molar ratio of the gold nanorod to the aptamer or the aptamer complementary chain could be 1:60 (paragraph n0031).
Regarding Claim 4, Weng teaches a length-diameter ratio of the gold nanorod is about 3.7 (n0008).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Weng et al. (Chinese Application No. CN202110159773A) in view of Konig et al. (US 20210140953) as applied to claim 1 above, and in further view of Gilboa-Geffen (US 20180128835).
With respect to Claim 2, Weng teaches the claimed invention as shown above, however, Weng does not teach the nucleic acid sequences (i.e., SEQ ID NO:1) used for the aptamer and aptamer complementary chain (i.e., SEQ ID NO:2) recited in claim 2.
However, Gilboa-Geffen teaches nucleic acid aptamers for allergen detection. The sequences presented in Gilboa-Geffen show a 66.4% query match to SEQ ID NO:1 and 68% query match to SEQ ID NO:2. Although, the sequence id of Gilboa-Geffen only have about 66-68% similarity, it still performs the same function as the instant invention of detecting an allergen such as wheat. Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify Weng to use the nucleic acid aptamers taught by Gilboa-Geffen for detecting wheat gluten in a sample in addition to the other allergens disclosed. See MPEP 2141(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENA BERA whose telephone number is (571)272-9964. The examiner can normally be reached Mon-Fri 8:00-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi can be reached at (571) 270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/H.R.B./Examiner, Art Unit 1798
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798