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 Objections
Claim 3 is objected to because of the following informalities: the claim recites “(bio-) chemical substance” in multiple locations. It is suggested to write “bio-chemical substance, chemical substance” . Appropriate correction is required.
Claim 16 is objected to because of the following informalities: in the last indentation of the claim, the claim recites “providing”. It is suggested to write “provide”, for grammatical correctness . Appropriate correction is required.
It is noted that the reference character in parenthesis “(P)” appears in claim 2, while all other reference characters have been deleted from the claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 14-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claims are directed to "A computer program", and “A computer-readable medium”. A computer program is not one of the statutory subject matter categories. See MPEP 2106 I. Gottschalk v. Benson, 409 U.S. at 72 (1972). A computer readable medium, under the broadest reasonable interpretation (BRI), will cover an ineligible signal per se unless defined otherwise in the application as filed. When the specification is silent, the BRI of computer instructions and a computer readable medium in view of the state of the art covers a signal per se. Thus, in this case, a claim to computer instructions or computer readable medium is ineligible unless amended to avoid the signal embodiment.
This rejection may be overcome by amending the claims to read “A non-transitory computer-readable storage medium” or the like. It is noted that a duplicate claims objection could be made if claims 14 and 15 are amended to encompass the same claimed scope.
The examiner notes that no rejection under 35 USC 101 is made in claim 12 as the providing steps are significantly more than abstract, as they integrate the abstract determining into a practical application.
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.
Claims 6 and 17 are 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.
Regarding claim 6, the claim recites “wherein the step of phototagging is performed prior to the step of controllably causing a local variation of one or more conditions for the objects in at least part of the holding space”. However, parent claim 1 requires that the “phototagging on the basis of the determined spatial dependency” and “determining a spatial dependency of the local variation”. Therefore, it is unclear how the phototagging can be done before the causing a local variation, as the phototagging is dependent on the local variation.
Regarding claim 17, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 9, 10, and 12-18 are rejected under 35 U.S.C. 102(a)(1),(a)(2) as being anticipated by Matula et al. (US 2015/0017678 A1), hereinafter “Matula”.
Regarding claim 1, Matula discloses a method of manipulating objects (abstract, Fig. 3) comprising:
providing a sample holder (ref 301, paragraph [0067]) comprising a holding space for holding an at least partly fluid sample (ref 50, paragraph [0067]);
providing a sample comprising one or more of the objects (refs 52, 54) in a fluid medium in the holding space (paragraph [0067]);
controllably causing a local variation of one or more conditions for the objects in at least part of the holding space (refs 302, 312, paragraphs [0067]-[0069]);
removing at least a fraction of the objects from the holding space (as shown in Fig. 3, paragraphs [0068]-[0071]);
determining a spatial dependency of the local variation (paragraph [0068]); and
phototagging on a basis of the determined spatial dependency at least part of the objects in the holding space in one or more tagging positions thus providing tagged objects (ref 318; paragraphs [0061], [0070]), and
wherein the step of removing at least a fraction of the objects from the holding space comprises removing at least part of the tagged objects (paragraph [0070]).
Regarding claim 2, Matula discloses wherein the method comprises determining values of the local variation, and wherein the one or more tagging positions (P) are selected on a basis of a predetermined value and/or range of values (paragraphs [0061], [0070]).
Regarding claim 3, Matula discloses wherein the one or more conditions comprise one or more of mechanical conditions, acoustic conditions, electromagnetic conditions, thermal conditions, a concentration of a (bio-) chemical substance and a number or concentration of objects; and/or wherein the local variation provides, one or more of: a mechanical force, a pressure force, an acoustic force, an electromagnetic force, a temperature change, a (bio-) chemical reaction trigger, a (bio-) chemical substance concentration variation, and a biological substance concentration variation; and/or wherein the local variation is configured to induce displacement of at least part of the objects relative to a portion of the holding space (paragraphs [0067]-[0071]).
Regarding claim 4, Matula discloses providing at least some of the objects with a tagging substance having an optical property that is alterable by illumination in one or more predetermined wavelength ranges, and wherein the phototagging comprises illuminating the at least part of the objects in the holding space in the one or more tagging positions with light having a wavelength in the one or more predetermined wavelength ranges and altering the optical property (paragraphs [0061], [0070]).
Regarding claim 5, Matula discloses providing at least part of the objects with one or more tagging substances enabling independent and/or multiple phototagging, and phototagging on a basis of the determined spatial dependency one or more of the objects provided with one or more tagging substances plural times and/or on plural tagging positions (paragraphs [0067]-[0071]).
Regarding claim 6, Matula discloses wherein the step of phototagging is performed prior to the step of controllably causing a local variation of one or more conditions for the objects in at least part of the holding space; or wherein the step of phototagging and the step of controllably causing a local variation of one or more conditions for the objects in at least part of the holding space are performed at least in part simultaneously (paragraph [0072]).
Regarding claim 9, Matula discloses wherein the step of controllably causing a local variation of one or more of the conditions comprises applying an acoustic wave in the sample holder for applying an acoustic force to the at least part of the objects in the holding space (ref 302, paragraph [0067]).
Regarding claim 10, Matula discloses determining an active area in the holding space and determining one or more tagging positions in the active area, and/or wherein the holding space comprises a holding space depth and the method comprises defining one or more tagging positions in a predetermined depth or range of depths within the holding space depth (as shown in Fig. 3, paragraphs [0061], [0070]).
Regarding claim 12, Matula discloses a computer implemented method of manipulating objects in a fluid medium (abstract, Fig. 3) comprising the steps of:
receiving data representing one or more conditions for objects (refs 52, 54) in a fluid medium in a holding space of a sample holder (ref 301, paragraph [0067]);
receiving data representing a local variation in the one or more conditions for the objects in the holding space (refs 302, 312, paragraphs [0067]-[0069]);
determining a spatial dependency of the local variation (paragraph [0068]);
determining on a basis of the determined spatial dependency one or more tagging positions for at least part of the objects in the holding space (ref 318; paragraphs [0061], [0070]);
providing a control signal for a controllable light source for phototagging at least part of the objects in the holding space in the one or more tagging positions thus providing tagged objects (ref 318; paragraphs [0061], [0070]);
providing a control signal for an actuator for controlling a fluid flow through the holding space for removing at least a fraction of the tagged objects from the holding space (paragraph [0070]).
Regarding claim 13, Matula discloses data processing apparatus comprising means for carrying out the method of claim 12 (paragraph [0118)].
Regarding claim 14, Matula discloses a computer program comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method of claim 12 (paragraph [0118]).
Regarding claim 15, Matula discloses a computer-readable medium having stored thereon the computer program of claim 14 (paragraph [0118]).
Regarding claim 16, Matula discloses a system comprising:
a sample holder (ref 301, paragraph [0067]) comprising a holding space for holding an at least partly fluid sample comprising one or more objects (refs 52, 54, paragraph [0067]);
an acoustic wave generator connectable or connected with the sample holder to generate an acoustic wave in the holding space exerting a force on at least part of the sample (refs 302, 312, paragraphs [0067]-[0069]);
a fluid supply for supplying at least part of an at least partly fluid sample to the holding space and/or for removing at least a fraction of the at least partly fluid sample from the holding space (paragraphs [0067]-[0071]); and
a light source for phototagging sample objects in the sample fluid in the holding space in one or more tagging positions thus providing tagged objects (ref 318, paragraph [0070]); and
a computer operably coupled to the acoustic wave generator, the fluid supply and the light source (paragraph [0118]), the computer configured to:
receive data representing one or more conditions for objects (refs 52, 54) in a fluid medium in a holding space of a sample holder (ref 301, paragraph [0067]);
receive data representing a local variation in the one or more conditions for the objects in the holding space (refs 302, 312, paragraphs [0067]-[0069]);
determine a spatial dependency of the local variation (paragraph [0068]);
determine on a basis of the determined spatial dependency one or more tagging positions for at least part of the objects in the holding space (ref 318; paragraphs [0061], [0070]);
provide a control signal for a controllable light source for phototagging at least part of the objects in the holding space in the one or more tagging positions thus providing tagged objects (ref 318; paragraphs [0061], [0070]);
providing a control signal for fluid supply for controlling a fluid flow through the holding space for removing at least a fraction of the tagged objects from the holding space (paragraph [0070]).
Regarding claim 17, Matula discloses wherein the sample holder comprises a wall providing the holding space with a functionalized wall surface portion to be contacted, in use, by at least part of the sample; and/or wherein the acoustic wave generator is configured to exert a force on the one or more objects, such as cellular bodies, of the sample in the holding space, when comprised in the holding space, in a direction away from a wall of the holding space, when provided (as shown in Fig. 3, paragraphs [0067], [0073]).
Regarding claim 18, Matula discloses an optical detector for optically detecting at least some objects of the sample in the holding space (paragraph [0070]).
Claims 1, 7-9, and 11-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wuite et al. (WO 2019/212349 A2), hereinafter “Wuite”.
Regarding claim 1, Wuite discloses a method of manipulating objects (abstract, Figs. 1-3) comprising:
providing a sample holder (ref 212, page 28, lines 8-13) comprising a holding space for holding an at least partly fluid sample (ref 216, lines 14-25);
providing a sample comprising one or more of the objects (refs 210, 212, 302, 304; page 26, lines 15-20; page 29, lines 1-10) in a fluid medium in the holding space (ref 206, page 28, lines 10-15);
controllably causing a local variation of one or more conditions for the objects in at least part of the holding space (ref 222, page 28, lines 25-30);
removing at least a fraction of the objects from the holding space (as shown in Fig. 3C, page 30, lines 10-25);
determining a spatial dependency of the local variation (page 17, lines 1-5; page 17, line 30- page 18, line 10); and
phototagging on a basis of the determined spatial dependency at least part of the objects in the holding space in one or more tagging positions thus providing tagged objects (page 18, lines 20-25), and
wherein the step of removing at least a fraction of the objects from the holding space comprises removing at least part of the tagged objects (as shown in Fig. 3C, page 30, lines 10-25).
Regarding claim 7, Wuite discloses providing the holding space with a functionalised wall surface portion to be contacted by at least part of the sample (ref 208, page 26, lines 10-20).
Regarding claim 8, Wuite discloses wherein the step of controllably causing a local variation of one or more of the conditions comprises subjecting the objects to a driving force for displacing at least some of the objects with respect to a portion of the holding space, wherein the driving force is configured for urging the objects in a direction away from the functionalised wall surface portion, when provided (page 17, lines 1-5; page 17, line 30- page 18, line 10; page 26, lines 10-20).
Regarding claim 9, Wuite discloses wherein the step of controllably causing a local variation of one or more of the conditions comprises applying an acoustic wave in the sample holder for applying an acoustic force to the at least part of the objects in the holding space (page 26, lines 1-10).
Regarding claim 11, Wuite discloses comprising repeating one or more times the steps of causing a local variation of at least one of the conditions for subjecting in at least part of the holding space at least part of the objects in the holding space to the local variation of the one or more conditions, and removing at least a fraction of the objects from the holding space (as shown in Fig. 3C, page 30, lines 10-25), wherein the step of phototagging is executed in between and/or during at least some successive instances of performing the steps of causing a local variation, and wherein in at least one repetition the step of causing a local variation of at least one of the conditions for subjecting in at least part of the holding space at least part of the objects in the holding space to a local variation of the one or more conditions may differ from a preceding execution of the step (page 40, lines 8-15 describe changing the applied resonance frequency, which inherently requires repeating the steps of the local variation).
Regarding claim 12, Wuite discloses a computer implemented method of manipulating objects in a fluid medium (abstract, Figs. 1-3) comprising the steps of:
receiving data representing one or more conditions for objects (refs 210, 212, 302, 304; page 26, lines 15-20; page 29, lines 1-10) in a fluid medium in a holding space of a sample holder (ref 212, page 28, lines 8-13);
receiving data representing a local variation in the one or more conditions for the objects in the holding space (ref 222, page 28, lines 25-30);
determining a spatial dependency of the local variation (page 17, lines 1-5; page 17, line 30- page 18, line 10);
determining on a basis of the determined spatial dependency one or more tagging positions for at least part of the objects in the holding space (page 18, lines 20-25);
providing a control signal for a controllable light source for phototagging at least part of the objects in the holding space in the one or more tagging positions thus providing tagged objects (page 18, lines 20-25);
providing a control signal for an actuator for controlling a fluid flow through the holding space for removing at least a fraction of the tagged objects from the holding space (as shown in Fig. 3C, page 30, lines 10-25).
Regarding claim 13, Wuite discloses Data processing apparatus comprising means for carrying out the method of claim 12 (page 26, lines 20-25).
Regarding claim 14, Wuite discloses a computer program comprising instructions which, when the program is executed by a computer, cause the computer to carry out the method of claim 12 (page 26, lines 20-25).
Regarding claim 15, Wuite discloses a computer-readable medium having stored thereon the computer program of claim 14 (page 26, lines 20-25).
Regarding claim 16, Wuite discloses a system comprising:
a sample holder (ref 212, page 28, lines 8-13) comprising a holding space for holding an at least partly fluid sample comprising one or more objects (refs 210, 212, 302, 304; page 26, lines 15-20; page 29, lines 1-10);
an acoustic wave generator connectable or connected with the sample holder to generate an acoustic wave in the holding space exerting a force on at least part of the sample (ref 222, page 28, lines 25-30);
a fluid supply for supplying at least part of an at least partly fluid sample to the holding space and/or for removing at least a fraction of the at least partly fluid sample from the holding space (ref 214, page 28 lines 15-25); and
a light source for phototagging sample objects in the sample fluid in the holding space in one or more tagging positions thus providing tagged objects (ref 120, page 27, lines 1-10); and
a computer operably coupled to the acoustic wave generator, the fluid supply and the light source (page 26, lines 20-25), the computer configured to:
receive data representing one or more conditions for objects (refs 210, 212, 302, 304; page 26, lines 15-20; page 29, lines 1-10) in a fluid medium in a holding space of a sample holder (ref 212, page 28, lines 8-13);
receive data representing a local variation in the one or more conditions for the objects in the holding space (ref 222, page 28, lines 25-30);;
determine a spatial dependency of the local variation (page 17, lines 1-5; page 17, line 30- page 18, line 10);
determine on a basis of the determined spatial dependency one or more tagging positions for at least part of the objects in the holding space (page 18, lines 20-25);
provide a control signal for the light source for phototagging at least part of the objects in the holding space in the one or more tagging positions thus providing tagged objects (page 18, lines 20-25); and
providing a control signal for fluid supply for controlling a fluid flow through the holding space for removing at least a fraction of the tagged objects from the holding space (as shown in Fig. 3C, page 30, lines 10-25).
Regarding claim 17, Wuite discloses wherein the sample holder comprises a wall providing the holding space with a functionalized wall surface portion to be contacted, in use, by at least part of the sample; and/or wherein the acoustic wave generator is configured to exert a force on the one or more objects, such as cellular bodies, of the sample in the holding space, when comprised in the holding space, in a direction away from a wall of the holding space, when provided (ref 222, page 28, lines 20-30).
Regarding claim 18, Wuite discloses an optical detector for optically detecting at least some objects of the sample in the holding space (ref 116, page 26, lines 20-30).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Horii (US 2011/0207238) teaches a similar analyzing device with a transducer causing local variations in the sample.
Wuite (US 2021/0247291) is the US equivalent of the WIPO publication used in the office action, but does not qualify as prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DOMINIC J BOLOGNA whose telephone number is (571)272-9282. The examiner can normally be reached Monday - Friday 7:30am-3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Uzma Alam can be reached at (571) 272-3995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINIC J BOLOGNA/Primary Examiner, Art Unit 2877