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 .
Claim Rejections - 35 USC § 112
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.
Claim 13 is rejected 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.
With respect to claim 13, there is no antecedent basis for the term “the polymer lay”.
Claim Rejections - 35 USC § 102
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 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.
Claim(s) 1 and 3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Singh et al. (WO 99/44042).
With respect to claim 1, Singh discloses a waveguide (20; page 16, second paragraph); a sensing layer coupled to the waveguide (4); a light source for emitting light onto the waveguide (25; page 24, first paragraph); and a detector for detecting a wavelength transmitted from the waveguide (29).
With respect to claim 3, Singh discloses a metal layer (Zirconium layer, 3; page 16, second paragraph).
Claim(s) 1, 3, 5, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kontani et al. (US 2016/0041353 A1).
With respect to claim 1, Kontani discloses: a sensor apparatus (par. [0011]), comprising: a waveguide (optical waveguide, 10); a sensing layer coupled to the waveguide (“the optical waveguide 10 and the metal layer 13 serve as a detection unit 20”, par. [0011]); a light source for emitting light onto the waveguide (light source, 110); and a detector for detecting a wavelength transmitted from the waveguide (light measuring instrument, 140).
With respect to claims 3 and 5, Kontani discloses sputtering a gold layer as a metal layer (par. [0057]).
With respect to claim 7, Kontani discloses an objective between the light source and the waveguide (par. [0043]).
Claim(s) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Levin et al. (US 2022/0229053 A1).
With respect to claim 1, Levin discloses: a sensor apparatus, comprising: a waveguide (waveguide channel, 204); a sensing layer coupled to the waveguide (208, par. [0115]); a light source for emitting light onto the waveguide (light unit, 312); and a detector for detecting a wavelength transmitted from the waveguide (detector unit, 320).
With respect to claim 2, Levin discloses a sensing layer comprising a polymer (par. [0233]).
Claim(s) 1-3, 7, 8, 14, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goddard et al. (WO 2011/058308).
With respect to claim 1, Goddard discloses: a sensor apparatus, comprising: a waveguide (12, Fig. 2); a sensing layer coupled to the waveguide (34); a light source for emitting light onto the waveguide (16); and a detector for detecting a wavelength transmitted from the waveguide (30).
With respect to claims 2-3, Goddard discloses a metal layer (38) and a polymer layer (34, page 7, lines 6-15).
With respect to claims 7 and 8, Goddard discloses an objective between the light source and the waveguide (converging lens, 24) and a second objective between the waveguide and the detector (second converging lens, 26).
With respect to claim 14, Goddard discloses a method for sensing a condition of a matrix of the environment (page 2, lines 16-21), comprising: emitting light of a first frequency onto a waveguide of a sensor (16), the waveguide being coupled to a sensing layer (page 6, lines 20-28), the sensing layer being in intimate contact with the matrix, the sensing layer including a polymer layer and a metal layer (page 7, lines 6-15); and detecting a second frequency transmitted from the waveguide (with 30).
With respect to claim 15, Goddard discloses interpreting the second frequency by comparing the second frequency with a previously obtained frequency detected from a control matrix (page 29, lines 11-30).
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.
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(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goddard, in view of Schleipen et al. (WO 2009/107041).
With respect to claim 12, Goddard is silent with regard to the use of polydimethylsiloxane. However, Schleipen discloses a waveguide structure including a transparent material comprising polydimethylsiloxane (page 11, lines 23-31). It would have been obvious to one having ordinary skill in the art to select an appropriate sensing layer material, such as polydimethylsiloxane, due to its durability and physically inert nature, such that the device would not interact with adjacent substances. Further, it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goddard, in view of Yan (US 2005/0018949 A1).
With respect to claim 16, Goddard is silent with regard to the claimed alert. Yan discloses a biosensor employing an optical waveguide for monitoring an environment (abstract), wherein an alarm may be triggered if a threshold is exceeded (par. [0034]). It would have been obvious to one having ordinary skill in the art to employ an alarm, such as that of Yan, in order to provide autonomous detection of a biohazard or analyte, without the need for manual review by an operator unless a necessary condition is met.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goddard, in view of Liu et al. (WO 98/14771).
With respect to claims 9 and 10, Goddard does not explicitly disclose the claimed casing. However, Liu discloses a housing comprising a hollow body with an opening (water channel, 8) to permit the sensing layer to come into contact with the environment, wherein a light source (3) is disposed on one a first end of the housing (left side, Fig. 1A), and a detector is disposed on a second end of the housing (4, right side of Fig. 1A), and wherein the waveguide (shown in Fig. 9A, 2), wherein the light source and detector are angled to point toward the waveguide (Figs. 1A, 9A). It would have been obvious to one having ordinary skill in the art to employ the casing of Liu with the device of Goddard, in order to contain the individual functional elements of the device, as well as maintaining alignment and avoiding outside interference and/or contamination.
Information Disclosure Statement
Some items listed on the information disclosure statement filed 19 March 2024 fail to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because they do not include a publication date including at least the year. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to because they contain color elements (handwritten labels in blue ink). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Allowable Subject Matter
Claim 13 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 4, 6, 11, and 13 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:
With respect to claim 11, the cited prior art does not specify a sensing layer disposed radially about a waveguide, in combination with all of the other claimed elements.
With respect to claims 4, 6, and 13, the cited prior art does not appear to disclose or reasonably suggest the claimed sensing layer comprising a metal layer and a polymer layer, the metal layer being between the waveguide and the polymer layer, as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK R GAWORECKI whose telephone number is (571)272-8540. The examiner can normally be reached Monday-Friday 8 AM-6 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DAVID MAKIYA can be reached at 571-272-2273. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK R GAWORECKI/ Primary Examiner, Art Unit 2884 31 October 2025