DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The Amendment filed on 2/2/2026 has been entered. Claims 5, 14 and 16 have been canceled, Claims 1-4, 6-13, 15 and 17-20 remain pending in the application. Applicant’s amendments to the claims have overcome 103 rejection.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent Application 18657623. Although the claims are not identical, they are not patentably distinct from each other because claim 1 in U.S. Patent Application 18657623 defines a method comprising: measuring light from cells in a sample comprising fluorescently-labeled mitochondria; generating images of the cell mitochondria from the measured light; calculating an image parameter from the generated images of the cell mitochondria; and assessing morphology of the cell mitochondria based on the calculated image parameter of the cell mitochondria. It would have been obvious to one of ordinary skill in the art to notice claim 1 in current application and claim 1 in U.S. Patent Application 18657623 are almost identical. All the claims are essentially the same structure and perform essentially the same function, therefore unpatentable for obvious-type double patenting.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim in Application 18624931
Claim in Application 18657623
1. A method for label-free particle sorting, the method comprising:
measuring light from a sample comprising label-free particles in a flow stream;
1. A method comprising:
measuring light from cells in a sample comprising fluorescently-labeled mitochondria;
generating frequency-encoded data from the measured light;
[0072]: frequency-encoded data (e.g., frequency-encoded spatial data) is generated from the measured light
generating an image of one or more of the particles from the frequency-encoded data;
generating images of the cell mitochondria from the measured light;
calculating image parameters from the generated image of the one or more particles; and
calculating an image parameter from the generated images of the cell mitochondria; and assessing morphology of the cell mitochondria based on the calculated image parameter of the cell mitochondria.
generating population clusters based on the calculated image parameters;
21. The method according to claim 20, wherein classifying the cells comprises assigning the cells to one or more particle population clusters.
applying one or more data gates to the population clusters, wherein the data gates are calculated from ground-truth image classification parameters generated from fluorescence measured from a sample comprising particles with one or more fluorescent labels; and
23. The method according to claim 22, wherein the one or more sorting gates capture cells comprising mitochondria of a target particle population cluster and exclude particles of a non-target particle population cluster.
generating a particle sort decision for the label-free particles based on the applied data gates.
30. The method according to claim 1, wherein the method further comprises sorting cells of the sample into a plurality of sample containers.
Allowable Subject Matter
Claims 1-4, 6-13, 15 and 17-20 are allowed if double patenting rejection can be overcome.
The following is an examiner’s statement of reasons for allowance:
Claim 1 is about a label-free particle sorting comprising: measuring light from a sample comprising label-free particles in a flow stream; generating frequency-encoded data from the measured light; generating an image of one or more of the particles from the frequency-encoded data; calculating image parameters from the generated image of the one or more particles; generating population clusters based on the calculated image parameters; applying one or more data gates to the population clusters, wherein the data gates are calculated from ground-truth image classification parameters generated from fluorescence measured from a sample comprising particles with one or more fluorescent labels; and generating a particle sort decision for the label-free particles based on the applied data gates.
Lin 20200309671, Hennig 20170052106, Tang 20210208056 and Roberts 20210270718 combined cannot discloses these limitations perfectly. The applicant’s argument is persuasive. Although the individual limitations recited in the claims do exist in isolation in the prior art of record, the specific combination recited by the Applicant is found to be non-obvious. These limitations when read in light of the rest of the limitations in the claim make the claim allowable subject matter.
Claim 2-4, 6-13, 15 and 17-20 depend on claim 1, are allowed based on same reason as claim 1.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yi Yang whose telephone number is (571)272-9589. The examiner can normally be reached on Monday-Friday 9:00 AM-6:00 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Hajnik can be reached on 571-272-7642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/YI YANG/
Primary Examiner, Art Unit 2616