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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on December 13, 2023 is being considered by the examiner.
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, 3-5, 7, 8, 10-12, 19 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8, 8, (3 and 8), 8, 8, 8, 8, 8, 8, (3 and 8) and 8 of US 11,209,423 B2, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because the above-identified claims of US 11,209,423 B2 anticipate the corresponding claims of the instant application.
Regarding claim 1, while claim 8 of US 11,209,423 B2 does not recite that the source optical fiber is “configured to receive light from a plurality of optical sources…mixture of wavelengths corresponding to the plurality of optical sources”, this recitation is directed to an intended use of the claimed source optical fiber. The optical fiber recited in claim 8 of US 11,209,423 B2 need only be capable of performing the intended use to anticipate the recitation. That said, given that the optical fiber recited in claim 8 of US 11,209,423 B2 is “configured to transmit light from…one or more optical sources”, it is capable of performing said intended use.
In addition, while claim 8 of US 11,209,423 B2 does not explicitly recite the limitation “outcouplers”, this limitation is considered a functional limitation. That said, it is anticipated by the recitation “the optical fiber is further configured to couple light…at a plurality of predetermined locations”.
For claims 4 and 19 of the instant application, which are rejected based on a combination of claims 3 and 8 of US 11,209,423 B2, it would have been obvious to have combined claims 3 and 8 of US 11,209,423 B2 in a single claim so as to anticipate claims 4 and 19 of the instant application.
Regarding claims 5, 8 and 20, the subject matter of the claims is directed to elements (tags in claim 5, light from optical sources in claims 8 and 20) that are not part of the claimed system. Hence claim 8 of US 11,209,423 B2 need to recite the subject matter to anticipate the rejected claims. The subject matter of the claims merely convey intended use of the claimed system. That said, because the device recited in claim 8 of US 11,209,423 B2 is capable of being used in the claimed manner (e.g. detect luminescent light, transport pulsed-light, transport two different ranges of wavelengths of light), the rejected claims are deemed to be anticipated by claim 8 of US 11,209,423 B2.
For claim 11, based on the disclosure of US 11,209,423 B2 directed to the intended use of the claimed planar heater, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the instant application to have made the heaters operable to heat to a temperature that accelerates PCR.
Claim Rejections - 35 USC § 112
In the event the determination of the status of the application as subject to AIA (or as subject to pre-AIA ) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the rationale supporting the rejection would be the same under either status.
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 13, 15 and 16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 13 is indefinite because it misappropriates the outcouplers to the optical substrate. According to claim 1, the source optical fiber comprises the outcouplers, and claim 13 establishes that the optical substrate and the source optical fiber are separate elements. Consequently, claim 13 reciting that the outcouplers are part of the optical substrate (as opposed to the source optical fiber) renders the claim indefinite.
Claim 15 is indefinite because the claim recites that the source optical fiber has an ion concentration. It is unclear what the claim is trying to convey. The claim improperly presumes the recitation is self-evident. Concentration is a property, not a physically tangible element, and given that hydroxyl ion concentration is not an intrinsic property of an optical fiber, the claim requires more context (e.g. is the fiber filled with fluid comprising hydroxyl ions?). The specification fails to provide clarity on this issue.
Claim 16 is grammatically indefinite. It is unclear what the recitation “from an optical detection layer…” intends to convey. The recitation that precedes the indefinite language appears to be complete. It is unclear what the indefinite language intends to further convey. Perhaps the claim intends to recite, “blocked by the source optical fiber, said blocked light being prevented from reaching an optical detection layer…”
Claim Interpretation
Claims 13 and 17-19 recite elements (optical substrate in claims 13, 17 and 18; optical detection layer in claim 19) that are not positively recited as parts of the claimed system. Yet they are necessary in order to ascertain the scope of claims. Consequently, the elements are being interpreted as being parts of the claimed invention even though they are not positively recited in the claims.
In claim 13, given that the outcouplers are positively recited elements of the claimed system, the optical substrate must also be part of the system too. Similarly, in claims 17 and 18, the optical substrate is vital to the manner in which the fiber is “positioned along the bioassay device”. Hence, the optical substrate is being interpreted as a part of the claimed system. Lastly, in claim 19, the one or more diffraction gratings are positively recited elements of the claimed invention and the claim further specifies a location of the gratings. In order to provide meaning to the location, the presence of the optical detection layer is necessary.
Allowable Subject Matter
Claims 2, 6, 9, 14, 17 and 18 are objected to as being dependent upon a rejected base claim, but they would be allowable if they are rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In addition, claims 13, 15 and 16 would be allowable if they are rewritten to overcome the 35 U.S.C. 112(b) rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Prior art is replete with disclosure directed to sensors that utilize optical fiber to direct light to and from an array of sample holders. For example, Hassibi (US 2008/0081769 A1) discloses a planar biochemical device, the device comprising (see Fig. 6):
a plurality of sample holders arranged in an array (see Fig. 6 illustrating a surface that supports an array of capturing layers); and
a faceplate comprising optical fibers coupled to the sample holders, wherein the faceplate transports light from each of the sample holders.
However, Hassibi does not disclose or render obvious an optical fiber comprising outcouplers at a plurality of locations along the fiber, wherein the outcouplers have different sizes that vary in accordance with the locations of the outcouplers along the fiber, as recited in claim 1.
Coyle, Jr. et al. (“Coyle”) (US 5,026,411) discloses an optical fiber comprising an outcoupler in the form of an opening in its cladding to enable optical coupling (see Fig. 1). Based on the disclosure of Coyle and prior art like Hassibi, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an optical fiber to deliver light to a plurality of sample holders by using outcouplers provided along a length of the fiber. However, prior art does not teach or render obvious provision of outcouplers having different sizes as recited in claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL S HYUN whose telephone number is (571)272-8559. The examiner can normally be reached M-F 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at 571-272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PAUL S HYUN/Primary Examiner, Art Unit 1796
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