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 30 is objected to because of the following informalities: claim 30 recites the terms Wasserperlen, Hydrokugeln, Aquaperlen and Gelkugeln which appear to be German terms. Also, the terms are written with parentheses, which is improper. Appropriate correction is required.
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 20, 23, 26, and 30-32 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.
Claims 20-24 and 26 recites the limitation "the target substance.” There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that claim 19 recites at least one target substance, thus it is unclear which of the “at least one target substance” recited in claim 19 “the target substance” of claims 20-24 and 26 references.
Claim 30 contains the trademark/trade name Aquabeads. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a superabsorber and, accordingly, the identification/description is indefinite.
For claim 30, the Examine is unable to determine the metes and bounds of the terms Wasserperlen, HydroKugeln, Aquaperlen, and Gelkugeln as neither the claims, nor the specification provides an adequate definition for the terms. For the purposes of examination, the Examiner will consider any superabsorber as meeting the limitations of claim 30.
Claim 31 recites the limitation "the temperature" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 32 recites the limitation "the size" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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) 19-21 and 25-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen et al., (ACS Materials Lett. 2020, 2, 1545-1554).
For claim 19, Chen et al., teach a microfiltration treatment comprising adding a liquid sample to porous superabsorbent polymer beads (Microfiltration Performance Test, page 1552), incubating the sample and the beads for a period of time (Microfiltration Performance Test, page 1552), and removing the leftover sample liquid from the superabsorbent polymer beads (Microfiltration Performance Test, page 1552). The Examiner notes that the time between adding the sample to the polymer beads and removing the liquid is being read as the claimed incubation period.
For claims 20 and 21, Chen et al., teach microfiltration to concentrate the sample (Microfiltration Performance Test, page 1552).
For claim 25, Chen et al., teach whole blood, blood plasma, and urine as the liquid sample (Microfiltration in Biofluid Media, page 1549-1550).
For claim 26, Chen et al., teach enzymes (proteins) and bacteriophages as target substances (Microfiltration in Biofluid Media, page 1549-1550).
For claims 27 and 28, Chen et al., teach the superabsorber beads made of polyacrylamide (Figure 1 legend) which is identical to the plastics material taught by the instant specification. With respect to claim 28, because the prior art superabsorbent beads are made of the same material as those of the instant claims, one would expect the prior art beads to exhibit properties identical to those of the instant claims.
For claim 29, Chen et al., teach beads for the superabsorber (Preparation of PSAP beads, page 1552) which reads on the claimed particles.
For claim 30, Chen et al., teach superabsorbent microbeads (Preparation of PSAP beads, page 1552) which reads on the limitations of claim 30. The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which claim 30 is indefinite.
For claim 31, Chen et al., teach the superabsorbent polymer beads becoming hydrated in water (Characterization of PSAP Beads, page 1547) which reads on claim 31 in that the type of PSAP beads controls the remaining liquid portion by becoming hydrated.
Claim(s) 19-32 is/are rejected under 35 U.S.C. 1029a)(1) as being anticipated by Xie et al., (Scientific Reports 6:20516).
For claim 19, Xie et al., teach a method of concentrating microorganisms comprising adding superabsorbent beads to a liquid sample (Concentration of water samples, page 6), incubating the superabsorbent beads and liquid sample (Concentration of water samples, page 6), and transferring the remaining water to a different container (Concentration of water samples, page 6).
For claims 20 and 21, Xie et al., teach concentrating the sample by filtration (Concentration of water samples, page 6).
For claims 22-24, Xie et al., teach a method of concentrating microorganisms comprising adding superabsorbent beads to a liquid sample (Concentration of water samples, page 6), incubating the superabsorbent beads and liquid sample (Concentration of water samples, page 6), and transferring the remaining water to a different container (Concentration of water samples, page 6). Xie et al., also teach repeating the concentration process four times to concentrate the sample.
For claim 25, Xie et al., teach water as the liquid sample (Concentration of water samples, page 6).
For claim 26, Xie et al., teach bacteriophages as the target biomolecule (Concentration of water samples, page 6).
For claims 27 and 28, Xie et al., teach the superabsorber beads made of polyacrylamide (Materials, page 6) which is identical to the plastics material taught by the instant specification. With respect to claim 28, because the prior art superabsorbent beads are made of the same material as those of the instant claims, one would expect the prior art beads to exhibit properties identical to those of the instant claims.
For claim 29, Xie et al., teach beads as the superabsorber (Preparation and characterization of SAP beads, page 6) which reads on the claimed particles.
For claim 30, Xie et al., teach superabsorbent microbeads (Preparation and characterization of SAP beads) which reads on the limitations of claim 30. The Examiner notes that the claim is being read in light of the rejection under 35 U.S.C. 112(b) in which claim 30 is indefinite.
For claim 31, Xie et al., teach the superabsorbent polymer beads becoming hydrated in water (Concentration of water samples, page 6) which reads on claim 31 in that the type of SAP beads controls the remaining liquid portion by becoming hydrated.
For claim 32, Xie et al., teach the size of the SAP beads controlling the volume of liquid remaining after incubation (Results and Discussion, page 5, first full paragraph).
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) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Xie et al., (Scientific Reports 6:20516) in view of Ahern (The Scientist 1995, 9(15):20, 1995).
Regarding claim 33, Xie et al., do not teach superabsorbent beads being part of a kit.
Ahern teaches that it is advantageous to form biochemical reagents in kits as a means of reducing the amount of time and labor required to make biochemical reagents (page 2, 4th full paragraph).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Xie et al., to form the SAP beads in a kit in order to reduce the amount of time and labor required to make the SAP beads as taught by Ahern.
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
