DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-64 of U.S. Patent No. 9322783 in view of Wohlstadter at al. (US 20040022677).
In regards to claim 18, 27 and 35, 9322783 teaches an assay system (claims 1, 9, 11 and 13), comprising: a light-tight enclosure (LTE) configured to store an assay component, the assay component configured to facilitate performance of an assay in the assay system (claim 1, 11 and 13, apparatus housing light tight enclosure with an assay); and a detection module coupled to the LTE and including: an imaging system configured to capture an image of the assay component (claims 1, 9, 11 and 13, detection module with imaging system imaging target/assay); and, the imaging system configured to adjust an alignment between the detection module and the LTE based on the captured image (claim 1, 9, 11 and 13, detection module is aligned with LTE by way of imaging system imaging target/assay), but does not specifically teach a microcontroller. Wohlstadter teaches a microcontroller for controlling an assay system (paragraphs 16, 91, 465, 503, 808, 831, fig. 17 and 35). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a microprocessor similar to Wohlstadter with the imaging system of 9322783 in order to control the system in an energy efficient manner with a compact design providing for a versatile design.
In regards to claims 19-26, 28-34, 36 and 37 are either read upon or obvious variants of claims 1-64 in 9322783 in view of Wohlstadter.
Claims 18-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 10837913 in view of Wohlstadter at al. (US 20040022677).
In regards to claim 18, 27 and 35, 10837913 teaches an assay system, comprising: a light-tight enclosure (LTE) configured to store an assay component, the assay component configured to facilitate performance of an assay in the assay system (claim 1, 5 and 7); and a detection module coupled to the LTE and including: an imaging system configured to capture an image of the assay component (claim 1, 5 and 7); and, the imaging system configured to adjust an alignment between the detection module and the LTE based on the captured image (claims 1, 5 and 7), but does not specifically teach a microcontroller. Wohlstadter teaches a microcontroller for controlling an assay system (paragraphs 16, 91, 465, 503, 808, 831, fig. 17 and 35). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to use a microprocessor similar to Wohlstadter with the imaging system of 10837913 in order to control the system in an energy efficient manner with a compact design providing for a versatile design.
In regards to claims 19-26, 28-34, 36 and 37 are either read upon or obvious variants of claims 1-28 in 10837913 in view of Wohlstadter.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Clinton et al. (US 20070231217) teaches an assay system, comprising: a light-tight enclosure (LTE) configured to store an assay component, the assay component configured to facilitate performance of an assay in the assay system (abstract, fig. 1-3, paragraph 47); and a detection module coupled to the LTE and including: an imaging system configured to capture an image of the assay component (paragraph 47, fig. 3); and a computer coupled to the imaging system, the computer configured to control operation of apparatus and adjust alignment of the assay plate to the imaging system via imaging the fiducials/markings/target on the plate (paragraph 23 and 65, fig. 1, 3 and 3), but does not specifically teach a microcontroller and adjust an alignment between the detection module and the LTE based on the captured image.
Wohlstadter at al. (US 20040022677) teaches an assay system, comprising: a light-tight enclosure (LTE) (1704/1904) configured to store an assay component (1710/1910) (fig. 17 and 19), the assay component configured to facilitate performance of an assay in the assay system (paragraph 505); and a detection module (1706/1906) coupled to the LTE (1704/1904) (fig. 17 and 19) and including: an imaging system configured to capture an image of the assay component (paragraph 505); and a microcontroller (paragraphs 16, 91, 465, 503, 808, 831, fig. 17 and 35, microprocessor) coupled to the imaging system (1706/1906) (paragraph 59, fig. 17), the microcontroller configured to adjust an alignment between the detection module and the assay (paragraphs 88, 499, 503, 507, 519, fig. 17 and 19), but does not specifically teach the microcontroller configured to adjust an alignment between the detection module and the LTE based on the captured image.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNIFER D BENNETT whose telephone number is (571)270-3419. The examiner can normally be reached 9AM-6PM EST M-F.
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/JENNIFER D BENNETT/Examiner, Art Unit 2878
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