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 .
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 1-4, 6, 8-11, and 14-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,502,724. Although the claims at issue are not identical, they are not patentably distinct from each other. The Examiner submits claims 1-20 of the ‘724 Patent fully encompass the scope of the rejected instant claims.
Regarding claims 1, 2, 4, 6, 8-11 and 16-20 – Claims 1, 13, and 18 of the ‘724 Patent recite a chemically selective percolation switch comprising: a positive electrode; a negative electrode separated from the positive electrode by a horizontal switch gap; a plurality of electrically conductive horizontal parallel plates formed in the switch gap, wherein at least some of the horizontal parallel plates vertically overlap at least some other horizontal parallel plates to form vertical structure gaps; and a binding agent located at a plurality of binding sites in the switch gap, wherein the binding agent is selective for binding to a target chemical compound, wherein the binding sites are on horizontal surfaces of the horizontal parallel plates, wherein the binding sites are distributed in the switch gap such that the binding sites are capable of binding molecules of the target chemical compound to form an electrically conductive pathway via percolation between the positive electrode and the negative electrode when the chemically-selective percolation switch is exposed to a threshold concentration of the target chemical compound. Claims 13 and 18 of the ‘724 Patent further recite a power supply and detection circuit.
Regarding claims 3 and 14 – Claim 6 of the ‘724 Patent recites a structure gap distance from 0.3 nanometer to 100 micrometers.
Regarding claim 15 – Claim 5 of the ‘724 Patent recites the horizontal plates have a width from 1 micrometer to 1 millimeter.
Claims 5, 7, 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,502,724. Claims 1-20 of the ‘724 Patent recite every element of instant claims 5, 7, 12 and 13 except for the specific number of binding sites and a number of stacked plates from 3 to 101. Claims 1-20 of the ‘724 Patent recite a plurality of binding sites and a plurality of plates, but not a specific number of sites or plates. With respect to claim 12 and 13, the Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to provide additional stacked horizontal plates. One of ordinary skill in the art would provide additional stacked plates in order to provide additional binding sites to capture more analytes. With respect to claims 5 and 7, the Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to provide additional binding sites in an array. One of ordinary skill in the art would provide additional binding sites in order to capture more analyte.
Claim Rejections - 35 USC § 102
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.
Claims 1-11 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2017/0336378).
Regarding claims 1, 2, 6, 9, 10 and 17 – As shown in Figures 6A, 6B and 7, Kim ‘378 teaches a chemically selective percolation switch (600/700), comprising: a positive electrode (610/710); a negative electrode (620/720) separated from the positive electrode (610/710) by a horizontal switch gap; and a plurality of electrically conductive structures (plates 660, 665/plates 760/765) in the horizontal switch gap (630, 730), wherein adjacent electrically conductive structures (plates 660, 665/plates 760/765) are separated by nanogaps forming binding sites between the adjacent electrically conductive structures, wherein the electrically conductive structures (plates 660, 665/plates 760/765) are arranged to form a three-dimensional array of binding sites having at least two stacked layers (plates 660, 665/plates 760/765) of binding sites, wherein the binding sites are distributed in the switch gap (630, 730) such that the binding sites are capable of binding molecules of a target chemical compound to form an electrically conductive pathway via percolation between the positive electrode (610/710) and the negative electrode (620/720) when the chemically selective percolation switch is exposed to a threshold concentration of the target chemical compound, and wherein the electrically conductive pathway is capable of forming in one of the layers of binding sites or in more than one of the layers of binding sites. With respect to claim 17, Kim teaches a power supply (1610) and detection circuit (1630) in Paragraphs 0097-0098.
Regarding claims 3 and 14 – Kim ‘378 recites a gap distance between conductive structures of 0.3 nanometers to 100 microns in Paragraph 0067 and claim 11; a gap distance of 12 nanometers in Paragraph 0100 and Figure 18; a gap distance of 5 nanometers in Paragraph 0101 and Figure 19; and a gap of 50 nanometers in Paragraph 0102 and Figure 20A.
Regarding claims 4 and 16 – Kim ‘378 teaches a binding agent attached to the electrically conductive structure at the nanogap for binding the targeted chemical compounds in Paragraphs 0079-0088.
Regarding claim 5 – Figures 2, 6A, 6B, and 7 of Kim ‘378 show more than 3 binding sites electrically connected through the electrically conductive structures (pillars, plates).
Regarding claims 9, 10, 11, and 17 – Kim ‘378 teaches electrically conductive sources comprises a plurality of multiple stacked horizontal plates wherein at least some of the horizontal plates partially vertically overlap at least some other horizontal parallel plates as overlapping portions which form vertical nanogaps between the parallel plates in Paragraphs 0069-0070 and 0103-0109. See also Figures 7, 21-25, 26A, 27A, and claims 5-6.
Regarding claims, 7, 8, and 13 – Figures 7 and 23-24 of Kim ‘378 shows an embodiment of the device having two stacked horizontal parallel plates with an array of binding sites of at least 4 binding sites in a lateral direction and at least 4 binding sites in a longitudinal direction.
Regarding claim 15 – Kim ‘378 discloses the horizontal plates have a width of 1 micrometer to 1 millimeter in claim 7.
Regarding claim 18 – Kim ‘378 teaches a threshold concentration of 1 part per billion to 1,000 parts per million in Paragraphs 0089 and claim 2.
Regarding claims 19 and 20 – Kim ‘378 discloses a power supply capable of operating at zero or near-zero power (less than 10 nW as defined in Paragraph 0003) and capable of providing a voltage of about 1.4-4.2 V in Paragraphs 0090-0098.
Claims 1-11 and 13-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim et al. (US 2018/0231514).
Kim ‘514 teaches an ultra-low power digital chemical analyzer. The embodiments of the device most relevant to the instant claims are shown in Figures 2, 6A, 6B, 7, and 21-26A. The embodiments are described in Paragraphs 0055-0108.
Regarding claims 1, 2, 6, 9, 10 and 17 – As shown in Figures 6A, 6B and 7, Kim ‘378 teaches a chemically selective percolation switch (600/700), comprising: a positive electrode (610/710); a negative electrode (620/720) separated from the positive electrode (610/710) by a horizontal switch gap; and a plurality of electrically conductive structures (plates 660, 665/plates 760/765) in the horizontal switch gap (630, 730), wherein adjacent electrically conductive structures (plates 660, 665/plates 760/765) are separated by nanogaps forming binding sites between the adjacent electrically conductive structures, wherein the electrically conductive structures (plates 660, 665/plates 760/765) are arranged to form a three-dimensional array of binding sites having at least two stacked layers (plates 660, 665/plates 760/765) of binding sites, wherein the binding sites are distributed in the switch gap (630, 730) such that the binding sites are capable of binding molecules of a target chemical compound to form an electrically conductive pathway via percolation between the positive electrode (610/710) and the negative electrode (620/720) when the chemically selective percolation switch is exposed to a threshold concentration of the target chemical compound, and wherein the electrically conductive pathway is capable of forming in one of the layers of binding sites or in more than one of the layers of binding sites. With respect to claim 17, Kim ‘514 teaches a power supply and detection circuit in Paragraphs 0096-0097.
Regarding claims 3 and 14 – Kim ‘514 recites a gap distance between conductive structures of 0.3 nanometers to 100 microns in Paragraph 0066 and claim 11; a gap distance of 12 nanometers in Paragraph 0099 and Figure 18; a gap distance of 5 nanometers in Paragraph 0100 and Figure 19; and a gap of 50 nanometers in Paragraphs 0101 and Figure 20A.
Regarding claims 4 and 16 – Kim ‘514 teaches a binding agent attached to the electrically conductive structure at the nanogap for binding the targeted chemical compounds in Paragraphs 0078-0087.
Regarding claim 5 – Figures 2, 6A, 6B, and 7 of Kim ‘514 show more than 3 binding sites electrically connected through the electrically conductive structures (pillars, plates).
Regarding claims 9, 10, 11, and 17 – Kim ‘514 teaches electrically conductive sources comprises a plurality of multiple stacked horizontal plates wherein at least some of the horizontal plates partially vertically overlap at least some other horizontal parallel plates as overlapping portions which form vertical nanogaps between the parallel plates in Paragraphs 0068-0069 and 0102-0108. See also Figures 7, 21-25, 26A, 27A, and claims 5-6.
Regarding claims, 7, 8, and 13 – Figures 7 and 23-24 of Kim ‘514 shows an embodiment of the device having two stacked horizontal parallel plates with an array of binding sites of at least 4 binding sites in a lateral direction and at least 4 binding sites in a longitudinal direction.
Regarding claim 15 – Kim ‘514 discloses the horizontal plates have a width of 1 micrometer to 1 millimeter in claim 7.
Regarding claim 18 – Kim ‘514 teaches a threshold concentration of 1 part per billion to 1,000 parts per million in Paragraphs 0088 and claim 2.
Regarding claims 19 and 20 – Kim ‘514 discloses a power supply capable of operating at zero or near-zero power (less than 10 nW as defined in Paragraph 0003) and capable of providing a voltage of about 1.4 - 4.2 V in Paragraphs 0089-0097.
Inventorship
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.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2017/0336378) or Kim et al. (2018/0231514).
Kim et al. (‘678 or ‘514) teach every element of claim 12 except for the number of stacked horizontal layers of horizontal parallel plates is from 3 to 101. Kim et al. (‘678 and ‘514) both recite a plurality of stacked horizontal plates, but do not explicitly recite more than two stacked horizontal plates.
The Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to provide additional stacked horizontal plates. One of ordinary skill in the art would provide additional stacked plates in order to provide additional binding sites.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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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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/DWAYNE K HANDY/Examiner, Art Unit 1798 July 18, 2016
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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