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
Applicant’s election without traverse of Group I, claims 1-7, 9-11, 13-15, 17, 20, 23, 24 and 76 and Species 1 drawn to a DNA molecule or DNA-analog-molecule in the reply filed on 07/29/2026 is acknowledged.
It should be noted that this application has been transferred to another examiner due to Applicant’s election of Group I.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/08/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 07/29/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The term “substantially transparent” and “substantially non-transparent” are defined in paragraph 45 of the instant application.
Specification
Applicant’s amendment to the specification has been considered and entered for the record.
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 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.
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, 2, 4-7, 9-10, 13-15, 17, 20, 23, 24 and 76 are rejected under 35 U.S.C. 103 as being unpatentable over Tsao et al. (US 2019/0369091 A1 – hereafter ‘091) in view of De Geest et al. (US 2010/0081215 A1 – hereafter ‘215).
It should be noted that ‘091 has a common Applicant and Assignee with the instant application, however, ‘091 was published more than a year than the instant application and qualifies as prior art under 35 U.S.C. 102a1.
‘091 discloses a composition of beads ([0008]) that includes the following limitations for claim 1:
“An encoded microcarrier”: ‘091 discloses a microcarrier ([0052]) that is encoded ([049]).
“a substantially transparent magnetic polymer layer having a first surface and a second surface”: ‘091 discloses a substantially transparent polymer layer with a first and second surface ([0009]) which includes a plurality of beads that may be magnetic. Also, ‘091 discloses that the transparent layer (layer 202; Fig. 2B; [0218]) and therefore this substrate is being interpreted as being a magnetic polymer layer with a first and second surface.
“the first and second surfaces being parallel to each other, wherein the substantially transparent magnetic polymer comprises a mix of substantially transparent polymer and a plurality of magnetic nanoparticles, and wherein the magnetic nanoparticles comprise iron(II,III) oxide or iron(III) oxide.”: The first and second surfaces of the transparent polymer layer (Fig. 2B; [0218]) are parallel to each other and includes magnetic nanoparticles (particles 206; [0219]) that can be made from a material such as iron ([0073])).
“a substantially non-transparent layer, wherein the substantially non-transparent layer is affixed to the first surface of the substantially transparent magnetic polymer layer, and wherein an outline of the substantially non-transparent layer constitutes a two-dimensional shape representing an analog code”: ‘091 discloses that the non-transparent layer (layer 204; Fig. 2B; [0218]) is affixed to the first surface of the transparent layer (layer 202) and is arranged in a two dimensional shape (Fig. 2B) that represents an analog code ([0009]).
“a capture agent for capturing an analyte, wherein the capture agent is coupled to at least one of the first surface and the second surface of the substantially transparent magnetic polymer layer”: ‘091 discloses that a capture agent is immobilized on the first surface and the second surface of the transparent layer ([0012]).
‘091 does not explicitly disclose that the magnetic particle is iron(III) oxide or iron(II,III) oxide.
‘215 (De Greest) discloses a microcarrier coating (Abstract) that for claim 1 discloses using magnetic particles made of iron(II) oxide or iron(III) oxide ([0044]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the earliest effective filing date to employ the nanoparticles of ‘215 within ‘091 to provide a surface to bind a target analyte. The suggestion for doing so at the time would have been to manipulate the particles in a magnetic field ([0042]).
‘091 differs from the limitations of claim 2.
For claim 2, ‘215 discloses that the particles are a superparamagnetic particle ([0043]).
This would be obvious to one of ordinary skill in the art at the time of the earliest effective filing date using the same reasoning as claim 1.
‘091 differs from the limitations of claim 4.
For claim 4, ‘215 discloses that the carrier can be 0.1% to 50% by weight of the layer ([0044]). This range renders the claimed range obvious.
This would be obvious to one of ordinary skill in the art at the time of the earliest effective filing date using the same reasoning as claim 1.
For claim 5, the particle of ‘091 discloses that the microcarrier can have a total thickness of 10 micrometers ([0211]) and therefore the transparent layer has a thickness between 0.1 micrometers to 50 micrometers.
For claim 6, the transparent layer of ‘091 is an epoxy-based polymer ([0009]).
For claim 7, the epoxy-based polymer is SU-8 ([0009]).
For claim 9, ‘091 discloses that the non-transparent layer can be a black matrix resist ([0070]).
For claim 10, ‘091 discloses the same non-transparent polymer of the instant application and this layer therefore has the same optical properties of the instant claim.
For claim 13, ‘091 discloses that the non-transparent layer has a thickness between 50 nm to 10 micrometers ([0009]).
For claim 14, ‘091 discloses that the analog code includes overlapping discontinuous ring (Fig. 4B; [0076]).
For claim 15, ‘091 discloses an orientation indicator for the non-transparent layer ([0009]) which comprises an asymmetry of the non-transparent layer ([0010]).
For claim 17, ‘091 discloses that the microcarrier is a circular disk with a diameter less than 200 micrometers ([0009]).
For claim 20, ‘091 discloses that the microcarrier has a thickness less than 50 micrometers ([0009]).
For claim 23, ‘091 discloses that the analyte is a DNA molecule or a DNA-analog-molecule ([0009]).
For claim 24, ‘091 discloses that the capture agent is a DNA molecule or a DNA-analog-molecule ([0009]).
For claim 76, ‘091 discloses the kit of the instant application that includes a first bead with a first analog code that would capture a first analyte and a second bead with a second analog code that would capture a second analyte ([0166]).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tsao et al. (US 2019/0369091 A1 – hereafter ‘091) in view of De Geest et al. (US 2010/0081215 A1 – hereafter ‘215) and in further view of Gong (US2013/0247993 A1 – hereafter ‘993).
Modified ‘091 differs from the instant claim 3.
‘993 (Gong) discloses a polymer solar cell that includes using nanoparticles of Fe3O4 ([0038]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of the earliest effective filing date to employ the nanoparticle size of ‘993 within modified ‘091 to provide a magnetic field for sorting the target analyte. The suggestion for doing so at the time would have been to have dispersed magnetic nanoparticles in the polymer that expose the target to a magnetic field ([0010]).
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: the prior art taken either singly or in combination fails to teach or reasonably suggest the following limitation when taken in context of the claim as a whole where the substantially non-transparent layer includes a metal that lacks residual magnetism.
The closest prior art is Tsao et al. (US 2019/0369091 A1) which discloses a transparent polymer layer with magnetic beads and a non-transparent layer, but does not teach or suggest where the non-transparent layer comprises a metal that lacks residual magnetism.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ho et al. (US 2011/0007955 A1) discloses a method for using barcoded magnetic particles.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL L HOBBS whose telephone number is (571)270-3724. The examiner can normally be reached Variable, but generally 8AM-5PM M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached at 571-272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL L HOBBS/Primary Examiner, Art Unit 1799
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