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 Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claims 5 and 6, the Examiner is not interpreting the sampling probe as a structural element of the device of claim 1 as the sampling probe, and the elements that make up the sampling probe are not components of the claimed device. Based on the instant specification, and the drawings, the sampling probe appears to be an additional element that connects the device with a chemical analyzer, but is not described, shown, or claimed as a structural element of the device. As such, the limitations of claims 5 and 6 will be given the appropriate patentable weight in the claims.
For claim 7, the Examiner notes that the claim can be considered as a duplicate of claim 3. Claim 7 depends from claim 6, which is not given patentable weight in the claims as claim 6 depends from claim 5 which does not recite a structural element of the device. The only difference between claims 3 and 7 is the claim from which they depend, however; as detailed above, claim 6 does not recite a structural element of the device of claim 1, thus claim 7 may be considered as a duplicate of claim 3.
For claim 8, the Examiner notes that it is unclear what structural elements are recited in the claim as the sampling space is not a structural element of the claimed device. The Examiner also notes that the sampling space is not a structural element of the device as it is a part of the sampling probe which is also not a structural element of the claimed device.
For claim 10, the Examiner notes that it is unclear what structural elements are recited in the claim as an elution solvent being “configured to” be delivered to a sampling space is not a structural limitation. The Examiner also notes that the sampling space is not a structural element of the device as it is a part of the sampling probe which is also not a structural element of the claimed device. The Examiner contends that any liquid or solvent can be configured to be moved or displaced, thus any device having a liquid meets the claim limitation.
For claim 11, the Examiner is unable to determine what structure makes up the acoustic droplet ejection device, and whether the acoustic droplet ejection device is a structural element of the device of claim 1. The instant specification recites the device comprising a coupling medium, but does not explicitly teach an acoustic droplet ejection device being a structural element of the claimed device. As such, the Examiner is unable to determine what structural elements make up the acoustic droplet ejection device, and whether the acoustic droplet ejection device is an element of the claimed device.
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 5, 6, 8, 10, 11, and 16 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.
For claims 5, 8, 10, and 11, it is unclear if the sampling probe and the elements that make up the sampling probe are structural elements of the device of claim 1, or if the sampling probe is a separate device that is capable of interacting with the device of claim 1. The Examiner notes that the specification, drawings, and claims do not recite the sampling probe as a structural element of the claimed device, thus the sampling probe, and any structural elements of the sampling probe will be given the appropriate patentable weight in the claims.
Claim 5 recites the limitation "the capture liquid" in line 7. There is insufficient antecedent basis for this limitation in the claim.
For claim 6, it is unclear what structural elements are recited in the claim as the capture liquid, desorption solvent, and one or more analytes are not structural elements of the claimed device.
For claim 11, it is unclear what structure makes up the acoustic droplet ejection device, and whether the acoustic droplet ejection device is a structural element of the device of claim 1. The instant specification recites the device comprising a coupling medium, but does not explicitly teach an acoustic droplet ejection device being a structural element of the claimed device. As such, the Examiner is unable to determine what structural elements make up the acoustic droplet ejection device, and whether the acoustic droplet ejection device is an element of the claimed device.
For claim 16, the phrase “about 100 microliters” is indefinite as the Examiner is unable to determine a deviation from 100 microliters that encompasses “about 100 microliters.”
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.
Claim(s) 1-7 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wells et al., (US 2012/0160038).
For claim 1, Wells et al., teach a solid phase extraction apparatus comprising a housing defining an extraction chamber (paragraph 0043, figure 4 #458), a stationary phase (paragraph 0043, figure 4#462) wherein the stationary phase is movable (paragraph 0044).
For claim 2, Wells et al., teach a surface portion of the extraction chamber comprising the stationary phase (paragraph 0044).
For claims 3 and 7, Wells et al., teach the stationary phase including a substrate (paragraph 0047).
For claims 4-6, the Examiner notes that the chemical analyzer, sampling probe, and capture liquid are not structural elements of the claimed “device for extracting analytes” thus the chemical analyzer, sampling probe, and capture liquid are not patentable structural elements of the device.
For claims 17-19, Wells et al., teach a needle (paragraph 0046) for sampling.
Claim(s) 1-10 and 12-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Markovsky (US 2010/0136670).
For claim 1, Markovsky teaches a sampling device comprising a housing defining a test unit body (extraction chamber, paragraph 0041, figure 1 #12), a stationary phase configured to be moved into the reading chamber (paragraphs 0042, 0047, figure 14 #4), wherein the stationary phase can be attached to a chemical analyzer (paragraph 0048, figure 15).
For claim 2, Markovsky teaches an extraction chamber comprising a stationary phase (paragraph 0047, figure 14 #4).
For claims 3 and 7, Markovsky teaches the adsorbent material being attached to a probe (substrate, paragraph 0043).
For claims 4-6, the Examiner notes that the chemical analyzer, sampling probe, and capture liquid are not structural elements of the claimed “device for extracting analytes” thus the chemical analyzer, sampling probe, and capture liquid are not patentable structural elements of the device.
For claim 8, Markovsky teaches the probe capable of being moved into a liquid (paragraph 0047). The Examiner notes that the adsorbent material of Markovsky is attached to a probe (substrate) thus moving the adsorbent material into a liquid necessarily requires the probe to be moved into the liquid. Additionally, the Examiner notes that the capture liquid and sampling space are not structural elements of the claimed device, and therefore are not considered with respect to patentability.
For claim 9, Markovsky teaches a reading chamber (elution chamber, paragraph 0041, figure 1 #8).
For claim 10, the Examiner notes that the elution solvent and the one or more analytes are not structural elements of the device, and are not required to be present in the device. Additionally, the sampling space and sampling probe are also not structural elements of the claimed device.
For claims 12-15, Markovsky teaches two reagent chambers and a reading chamber (paragraph 0051). The Examiner contends that the reagent chambers are suitable for containing a washing buffer, reagents, and a conditioning solvent as the claims do not require any specific liquid, reagent, or solvent to be contained in the chambers.
Claim Rejections - 35 USC § 103
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.
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) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markovsky (US 2010/0136670).
Regarding claim 16, Markovsky teaches the chambers being sized to hold a variety of quantities or volumes (paragraph 0052), but do not explicitly teach the chambers containing less than about 100 microliters. The Examiner is reading this limitation as a change in size or proportion which would have been obvious to one of ordinary skill in the art (MPEP 2144.04 IV A). The MPEP states that where the only difference between the prior art and the claims is a recitation of relative dimensions, and a device having the claimed relative dimensions would not perform different than the prior art device, the claimed device is not patentably distinct from the prior art. Reference to Markovsky teaches that the chambers can be sized to hole a variety of volumes, thus one of ordinary skill in the art would have found it obvious to size the chambers to hold 100 microliters as recited in claim 16. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Markovsky wherein the chambers are sized to contain less than 100 microliters as changes in size/proportion require only routine skill in the art.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markovsky (US 2010/0136670) in view of Ellson et al., (US 2016/0109336).
Regarding claim 11, Markovsky et al., do not teach an acoustic droplet ejection device.
Ellson et al., teach a system for determining concentration of an analyte in a fluid wherein an acoustic ejection droplet device is utilized to generate nanoliter sized droplets (paragraph 0020). Ellson et al., teach that acoustic droplet ejection devices provides the advantage of not requiring tubing or invasive mechanical action (paragraph 0020). Ellson et al., also teach that acoustic droplet ejection devices are not subject to clogging, misdirected fluid, or improperly sized droplets (paragraph 0020).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Markovsky et al., to include an acoustic droplet ejection device in order to generate droplets without the use of tubing or mechanical action, and to utilize a device that is not subjected to clogging or improperly sized droplets as taught by Ellson et al.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAN A GERIDO/ Examiner, Art Unit 1797 /LYLE ALEXANDER/ Supervisory Patent Examiner, Art Unit 1797
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