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 .
Support for the amendments is within the instant application specification.
Applicant’s amendment to the claims filed on 6/22/2026 in response to the Non-Final Rejection mailed on 3/19/2026 is acknowledged. This listing of claims replaces all prior listings of claims in the application.
Claims 1-6, 8-10, 19, 24-32, 34 are pending.
Claims 7, 11-18, 20-23, 33 are cancelled.
Claims 19, 24-32, 34 stands withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-6, 8-10 are pending and examined on the merits.
Applicant’s remarks filed on 6/22/2026 in response to the Non-Final Rejection mailed on 3/19/2026 have been fully considered and are deemed persuasive to overcome at least one of the rejections and/or objections as previously applied.
The text of those sections of Title 35 U.S. Code not included in the instant action can be found in the prior Office Action.
Withdrawn Objections
The objection to claims 2, 8-10 under 37 CFR 1.75 because of the following informalities: ‘s’ (claims 8, 10), ‘()’ and ‘mol’ (claim 2) are withdrawn in view of Applicant amending claim 2 to recite ‘mole,’ claim 8 to recite ‘seconds,’ claim 10 to recite ‘seconds.’
Withdrawn Rejections
The rejection of claims 2-5, 8 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or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention is withdrawn in view of Applicant’s amendment of claim 2 to recite ‘mole,’ claim 8 to recite ‘seconds’ and the recitation ‘predetermined ratio’ being defined in the instant application specification and dependent claim 3.
Maintained Claim Rejections - 35 USC § 112(b)
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.
The rejection of claim 9 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 are maintained.
Regarding claim 9, the term ‘s’ is indefinite as it is unclear what said term represents. It is suggested that Applicant spell out the term. Appropriate correction is suggested.
RESPONSE TO REMARKS: Beginning on p. 6 of Applicant’s remarks, Applicant in summary contends that the claims have been amended to overcome the 112(b) rejection in the office action dated 3/19/2026.
The arguments are not persuasive. Examiner contends that the recitation ‘s’ in claim 9, line 2, of the instant application is indefinite as there is no way to assertation what ‘s’ is referencing. It is suggested that Application amend the claim to recite ‘seconds.’
Maintained Claim Rejections - 35 USC § 103
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 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 rejection of claims 1-6, 8-10 under 35 U.S.C. 103 as being unpatentable over Anzai et al (1999, Graduate School of Pharmaceutical Sciences, cited on PTO-892 dated 3/19/2026) {herein Anzai} as evidenced by OneMore, 2023, Examiner cited) {herein OneMore} is maintained. The rejection has been modified to address Applicant’s arguments that Anzai neither teaches nor suggests the claimed methods.
Claims 1-6, 8-10 are drawn to a method of preparing a protein sample in a thin film for a bioprocessing assay, comprising:(a) combining an enzyme and a protein substrate at a predetermined ratio to produce a substrate-enzyme mixture;(b) depositing the mixture of step (a) in a bottom conical or frustoconical surface; and (c) pressing the mixture between the bottom conical or frustoconical surface and a top conical or frustoconical surface by applying a predetermined force between the top conical or frustoconical surface and the bottom conical or frustoconical surface, wherein the top conical or frustoconical surface and bottom conical or frustoconical surface are vertically oriented and configured to produce a nested conical or frustoconical interface; thereby forming a thin film comprising the protein-enzyme mixture in the nested conical interface.
With respect to claim 1, Anzai teaches a method wherein Concanavalin A (Con A), a lectin protein found in Jack bean, is used to form multilayer thin films composed of 1ng of ConA and 1 mg of mannose-labeled enzymes (mLOx) on the surface of quartz slides (page 2581, column 2, para 2 and page 2852, column 1, para 1). Furthermore, glycoproteins such as glucose oxidase (GOx) and horseradish peroxidase (HRP) were found to be assembled into multilayer thin films (page 2852, column 1, para 1; page 2852, column 1, para 2). Absent evidence, otherwise, it is the Examiner’s position that 1ng of ConA and 1 mg of mannose-labeled enzymes are predetermined ratios as recited in the instant application claim 1.
However, Anzai does not teach (b) depositing the mixture of step (a) in a bottom conical or frustoconical surface; and (c) pressing the mixture between the bottom conical or frustoconical surface and a top conical or frustoconical surface by applying a predetermined force between the top conical or frustoconical surface and the bottom conical or frustoconical surface, wherein the top conical or frustoconical surface and bottom conical or frustoconical surface are vertically oriented and configured to produce a nested conical or frustoconical interface; thereby forming a thin film comprising the protein-enzyme mixture in the nested conical interface (claim 1). Anzai does not teach wherein the predetermined ratio of the enzyme and protein substrate is about 1:20, 1:25, 1:30, 1:40, 1:50, 1:60, 1:70, 1:80, 1:90, 1:100, 1:110, 1:120, 1:130, 1:140, 1:150, 1:160, 1:170, 1:180, 1:190, or 1:200 (mol enzyme : mol substrate) (claim 2). Anzai does not teach wherein the substrate-enzyme mixture is in a solution at a concentration of 0.1 to 20 mg/mL (claim 3). Anzai does not teach wherein the enzyme mixture is in 10 µL to 100 µL of the solution (claim 4). Anzai does not teach wherein the solution has a viscosity of 0.1 to 2.0 mPa-S (claim 5). Anzai does not teach wherein the predetermined force is between 3 and 20 pounds (claim 6). Anzai does not teach wherein the force is applied for a duration between 3 and 5 s (claim 8). Anzai does not teach wherein the application of force is followed by withdrawal of force for a duration of between 1 s and 2 s (claim 9). Anzai does not teach wherein the application and withdrawal of force is performed over a total duration of 30 s (claim 10).
With respect to claim 5, since Anzai teaches the structure of a method of preparing a protein sample in a thin film for a bioprocessing assay. As such, it is the Examiner’s position that said assay would necessarily have a viscosity of 0.1 to 2.0 mPa-S, as recited in claim 5 of the instant application. Although the reference of Anzai does not explicitly teach the limitations of claim 2 (the predetermined ratio of the enzyme and protein substrate is about 1:20, 1:25, 1:30, 1:40, 1:50, 1:60, 1:70, 1:80, 1:90, 1:100, 1:110, 1:120, 1:130, 1:140, 1:150, 1:160, 1:170, 1:180, 1:190, or 1:200 (mol enzyme : mol substrate), claim 3 (wherein the substrate-enzyme mixture is in a solution at a concentration of 0.1 to 20 mg/mL), claim 4 (the enzyme mixture is in 10 µL to 100 µL of the solution.), claim 5 (the solution has a viscosity of 0.1 to 2.0 mPa-S), MPEP 2144.05 states"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (MPEP 2144.05 IIA)." One of ordinary skill would desire to optimize the ratio of enzyme to substrate, concentration of substrate-enzyme mixture, concentration of enzyme mixture, viscosity depending on the particular application. It would be routine for one to arrive at a ratio of enzyme to substrate, concentration of enzyme mixture, concentration of the enzyme-substrate mixture, viscosity for the application they intend on using the thin film for a bioprocessing assay. Therefore, the above invention would have been prima facie obvious.
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the method of preparing a protein sample in a thin film for a bioprocessing assay, taught by Anzai, of (b) depositing the mixture of step (a) in a bottom conical or frustoconical surface; and (c) pressing the mixture between the bottom conical or frustoconical surface and a top conical or frustoconical surface by applying a predetermined force between the top conical or frustoconical surface and the bottom conical or frustoconical surface, wherein the top conical or frustoconical surface and bottom conical or frustoconical surface are vertically oriented and configured to produce a nested conical or frustoconical interface because it is known by those of ordinary skill in the art and well-known in the art that depositing mixtures between thin films in a conical shape, pressing thin film between a top conical surface and bottom conical surface in a vertical orientation would provide enhanced performance by managing fluid flow, optimizing storage conditions and providing structural stability. As such, said limitation is not novel or inventive considering it is routinely known and well-understood in the art.
One of ordinary skill in the art would be motivated, have had a reasonable expectation of success, a reasonable level of predictability to deposit the thin film with the mixture in a bottom conical surface and place a top conical surface vertically oriented to produce a nested conical interface, apply pressure and subsequently apply a withdrawal force to form a thin film comprising a protein sample as doing so would reduce the likelihood of protein leaching, optimize storage conditions and maintain structural stability. It would be obvious to one of ordinary skill in the art to modify the invention taught by Anzai by pressing the mixture between the bottom conical surface and a top conical surface by applying a predetermined force between the top conical surface and the bottom conical surface, wherein the top conical surface and bottom conical surface are vertically oriented and configured to produce a nested conical interface; thereby forming a thin film comprising the protein-enzyme mixture in the nested conical interface as Anzai teaches that the multilayer thin films are relatively leaky to the substrates of the enzymes and the reaction products (page 2856, column 2, para 1). Anzai further teaches after 2 months of storage, the catalytic activities of ConA-m-LOx film was less stable (page 2856, column 1, para 2). About half of the original activity remained after 2 weeks (page 2586, column 1, para 2). As such, Anzai would be motivated to modify the storage conditions of the thin film by pressing the mixture between the bottom conical and a top conical of the test tube and applying a predetermined force between the top conical and bottom conical of the tube as doing so would reduce the likelihood of leaking during storage as the material would be sealed. Furthermore, Anzai would be motivated to modify the structure of the multilayer thin films on the surface of a quartz slide to a quartz slide with a conical surface as it is well-known and understood in the art that a conical shape is scientifically better at preventing leaks than a flat surface. Furthermore, a conical shape spreads force evenly across its sloping walls, thereby lowering stress points and creating a tight seal. Whereas flat surfaces bend more easily under force, thereby breaking seals and causing leaks. Supporting the Examiner’s position is the evidentiary reference of OneMore, which is cited to demonstrate that conical sealed surfaces are used extensively in the industry as they prevent leaks (page 1-2). Additionally, a conical surface would reduce the likelihood of premature protein unfolding as the thin film would not be exposed to external environmental factors such as water that could cause enzyme inactivity (unfolding) due to high surface tension and hydrophobic interactions.
RESPONSE TO REMARKS: Applicant's arguments filed 6/22/2026 have been fully considered but they are not persuasive. Beginning on p. 8 of Applicants’ remarks, Applicants in summary contend that the Office has not identified any teaching or suggestion in Anzai that would have motivated such modifications, nor has the Office provided a reasoned explanation grounded in the prior art or the general knowledge in the art for replacing Anzai's adsorption-based multilayer deposition process with Applicant's claimed pressed thin-film methodology.
The arguments are not persuasive. Examiner contends that Anzai would be motivated to modify the storage conditions of the thin film by pressing the mixture between the bottom conical and a top conical of a quartz slide with a conical surface and applying a predetermined force between the top conical and bottom conical of the slide as doing so would reduce the likelihood of leaking during storage as the material would be sealed. Examiner contends that Anzai would be motivated to modify the structure of the quartz slide to contain a conical surface as it is well-known and understood in the art that a conical shape is scientifically better at preventing leaks than a flat shape. Furthermore, a conical surface spreads force evenly across its sloping walls, thereby lowering stress points and creating a tight seal. Whereas flat surfaces bend more easily under force, thereby breaking seals and causing leaks. Supporting the Examiner’s position is the evidentiary reference of OneMore, which is cited to demonstrate that conical sealed surfaces are used extensively in the industry as they prevent leaks (page 1-2).
Applicants contend that Anzai does not disclose pressing, compression, application of force, nested interfaces, conical surfaces, frustoconical surfaces, or any comparable structure or process. Instead, Anzai repeatedly emphasizes that multilayer films are produced through sequential adsorption events occurring during immersion of solid support into various solutions. Indeed, Anzai's layer-by- layer adsorption process is conceptually opposite to the presently claimed pressing process, as it requires no pressing, no force, and no opposing surfaces that constrain the enzyme: protein substrate mixture within a thin film. The Office's proposed modification would therefore require wholesale reconstruction of Anzai's methodology rather than a routine variation thereof. Applicant contends that the Office suggests that forming a pressed thin film within nested conical structures would reduce leakage, optimize storage conditions, maintain structural stability, and reduce protein unfolding. However, the Office Action cites no reference teaching these propositions and identifies no disclosure in Anzai that would have led a skilled artisan to make such modifications.
The arguments are not persuasive. Examiner contends that Anzai would be motivated to modify their method of making multilayer thin film enzyme-protein constructs by adsorbing the thin film to a quartz slide with a conical surface as opposed to a quartz slide without a conical surface, as Anzai teaches one of the issue with said method is that the substrates of the enzymes built within the multi thin layers are leaky (page 2856, column 2, para 2). As such, it would be obvious to one of ordinary skill in the art that substituting the quartz slides taught by Anzai with a quartz slide with a conical surface would reduce the likelihood of leaks as the conical surface would act as a vessel to better contain the thin-film containing substrate-enzyme mixture. Especially since said slide with a conical surface can form a tight, leak-free seal. Furthermore, Examiner contends that Anzai would be motivated to apply pressure and subsequently apply a withdrawal force to form a sealed thin film comprising a protein sample as again, doing so would reduce the likelihood of protein leaching, optimize storage conditions and maintain structural stability. Especially since Anzai teaches the catalytic activities within the multi-layer thin film was reduced after 2 weeks. Applying pressure to the multi-layer think film would serve as a mechanism for inhibiting leaking of the composition and would serve as an additional mode for inhibiting environmental stresses that could inter with the activity of the enzyme-substrate composition. Supporting the Examiner’s position is the evidentiary reference of One More, which is cited to demonstrate that conical sealed surfaces are used extensively in the industry as they prevent leaks (page 1-2).
Applicant contends that Anzai neither addresses nor recognizes the problem solved by the present invention, namely preparation of pressed thin-film enzyme/protein-substrate samples for accelerating enzymatic reactions in bioprocessing assays. Additionally, the claimed method achieves rapid formation of a pressed thin film by physically compressing an enzyme-substrate mixture between nested conical or frustoconical surfaces, thereby facilitating accelerated enzymatic processing. A person of skill in the art seeking to improve the speed of enzymatic digestion workflows would not have been motivated to adopt or modify Anzai's time-intensive layer-by- layer adsorption methodology which was developed for fabrication of biosensor and bioreactor coatings rather than acceleration of enzymatic sample preparation.
The arguments are not persuasive. Examiner contends that Applicant is merely claiming a method of preparing a protein sample in a thin film for a bioprocessing assay thereby forming a thin film comprising the protein-enzyme mixture in a nested conical interface. Examiner contends that the limitations Applicant recites in the Applicants Arguments/Remarks are not part of any claimed limitations. Examiner contends that Applicant’s claim language is sufficiently broad to encompass any substrate-enzyme mixture within any thin film for any use. Furthermore, Applicant is reminded that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim limitations.
Applicant contends that the Office's rejection rests on an erroneous understanding of what Anzai teaches. The Office appears to equate Anzai's combination of Con A and enzymes with the claimed enzyme and protein substrate mixture. However, Anzai does not disclose combining an enzyme with its protein substrate as recited in the pending claims. Applicant contends that although Anzai discloses horseradish peroxidase (HRP), Anzai does not describe HRP as a substrate for Con A. Consequently, Anzai does not disclose, teach, or suggest the claimed combination of an enzyme and a protein substrate used to prepare a substrate-enzyme mixture for accelerating enzymatic reactions in a bioprocessing assay.
The arguments are not persuasive. Examiner contends that Applicant has not specified a particular enzyme and substrate within the claim language. As such, the argument that Anzai teaches proteins and substrates that are different from Applicant’s invention are moot.
Conclusion
Status of Claims
Claims 1-6, 8-10 are pending.
Claims 7, 11-18, 20-23, 33 are cancelled.
Claims 19, 24-32, 34 stands withdrawn pursuant to 37 CFR 1.142(b).
Claims 1-6, 8-10 are rejected.
No claims are in condition for allowance.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA NICOLE JONES-FOSTER whose telephone number is (571)270-0360. The examiner can normally be reached mf 7:30a - 4:30p.
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/ERICA NICOLE JONES-FOSTER/Examiner, Art Unit 1656
/MANJUNATH N RAO/Supervisory Patent Examiner, Art Unit 1656
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