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 .
Status of Claims
There are two sets of claims submitted on 10 JULY 2024. The claim set consisting of two page and the claim have status identifiers is considered on the merits below.
In the claim set, Claims 1-8 are presented and are considered on the merits below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10 JULY 2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
An “optical measurement device configured to generate surface plasmon resonance” in claim 1.
A device not does not connate any particular structure. It is interpreted that the “optical measurement device” is the same as the “optical measuring device”. The specification describes the “optical measuring device” to comprise an optical source, optical shaping device, a polarizer and a photodetector.
It is suggested by the Examiner to amend the claim language to recite “measuring” not “measurement”; since the specification does not actually teach a “measurement device”.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The claim(s) recite(s) a step of detecting biological objects from the acquired image. This step is considered to be a mental process or a process that can performed with a pen and paper. See MPEP 2106.04 (a).
This judicial exception is not integrated into a practical application because once the determining step is performed nothing else is done. The assimilation and acquiring an image step are directed to an insignificant extra solution activity which amounts to mere data gathering and does not impart any significance to the abstract idea, nor the claim when viewed as a whole. MPEP 2106.05(g). The claim as a whole does not include any steps within the claim that transforms the claim into something that integrates the abstract idea into a practical application of the abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional steps in claim 1 are taught in the prior art , FR3103895A1 to HERRIER. The steps of exposing a sample of interest to a functionalized surface and acquiring an image is well understood routine and convention in analyte analysis. In addition, the last step carried out between the assimilation step and the acquisition steps are also taught or suggested in HERRIER (see rejection below).
Claims 2, 3, and 8 merely further define characteristics of the biological sample which does not place the method into a practical application nor are these limitations or characteristics significantly more.
Claim 4 define a characteristic or condition of the detection system and does not place the method into a practical application nor are these limitations or characteristics significantly more.
Claim 5-7 either adds an additional step or further defines previously claimed method steps in claim 1, which does not place the method into a practical application nor are these limitations or characteristics significantly more as these steps are either taught or suggested in the prior art.
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 1-8 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.
In Clam 1, in the last bullet point; it is unclear what ‘it’ is referring to.
Claim 1 recites the limitation "the optical measuring device" in the acquiring step. There is insufficient antecedent basis for this limitation in the claim.
Dependent claims follow the same reasoning as being dependent upon Claim 1.
Regarding claim 2, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 103
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 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over HERRIER, FR 3103895 A1, submitted on the Information Disclosure Statement on 10 JULY 2024; Foreign Patent Documents Cite no. 1.
An English machine translation has been obtained from Google Patents and has been used as the basis of the rejection below. The paragraph number are those recited on the FR original patent.
Applicant’s invention is directed towards a method.
Regarding Claim 1, the reference HERRIER discloses a method for detecting biological objects, abstract, method for characterizing compounds of interest, by means of a surface plasmon resonance imaging detection system, [0004, 0026], SPR characterization, comprising:
a functionalized surface having at least one sensitive site formed of ligands adapted to bind to biological objects, [0007] measuring support 5 and sensitive sites 61-3,Figure 1A, 1B; and
an optical measurement device configured to generate surface plasmon resonance at the functionalized surface when said surface is exposed to a gas, Figure 1A, measuring device 3 comprises a light source 8 of an optical excitation signal and an image sensor 8, [0008], and adapted to acquire an image of the sensitive site, [0008]; the method comprising:
an assimilation step, comprising exposure of the functionalized surface to a sample of interest formed of an aqueous carrier liquid containing the biological objects, the biological objects then binding to the ligand, [0012, 0047-0050], P2;
a step of acquiring an image of the sensitive site by the optical measuring device, [0008];
a step of detecting biological objects from the acquired image, [0008, 0009, 0043, 0045];
the method being characterized in that wherein it comprises a step, carried out between the assimilation step and the acquisition step, of removing the liquid in contact with the functionalized surface, [0012, 0051], phase P3, The dissociation phase P3 corresponds to a step of evacuation of the compounds of interest present in the measurement chamber, from time t d , so that the concentration of compounds LA decreases, usually exponentially. This may involve introducing the first gaseous sample again into the measurement chamber.
HERRIER discloses at step of exposing the functionalized surface to a gas not containing the biological objects, the biological objects remaining bound to the ligands, [0041], Claim 1, phase P1, first gaseous sample formed of a carrier gas without the compounds of interest, the acquisition step then being carried out while the biological objects are bound to the ligands and the gas is in contact with the functionalized surface, [0041, 0042], Figure 1C, but does not teach this steps between the assimilation and acquisition steps.
However, it would be obvious to one having ordinary skill in the art before the effective filing date to modify the claimed invention to have the exposing step between the assimilation and acquisition steps to clear the functionalized surface of any excess gases.
Additional Disclosures Included are: Claim 2: wherein the method of detection according to claim 1, wherein the biological objects are smaller, preferably up to 200 times smaller, than a predefined spatial resolution of the detection system, [0032], In general, the compounds of interest ( analytes ) are elements intended to be characterized by the electronic nose, and contained in a gaseous sample. They can be, by way of illustration, bacteria, viruses, proteins, lipids, volatile organic molecules, inorganic compounds, among others.; Claim 3: wherein the method of detection according to claim 1, wherein the biological objects have a size between 50 nm and 50 mm, [0032], it is known in the art that bacteria, viruses, proteins, lipids, volatile organic molecules, inorganic compounds are within the range of 50 nm and 50 mm. ; Claim 4: wherein the method of detection according to claim l, wherein the detection system has a spatial resolution of at least 5 mm, [0038] ; Claim 5: wherein the method of detection according to claim l, comprising a step of rinsing the functionalized surface with at least one liquid, carried out between the assimilation step and the removal step, [0042]. ; Claim 6: wherein the method of detection according to claim l, wherein, during the assimilation step, the liquid carrying the sample of interest is in a continuous or dispersed phase, [0047-0050], see description of phase P2. ; Claim 7: wherein the method of detection according to claim l, wherein, during the removal step, the gas has a relative humidity of at least 50%, [0058], A first signature M1 corresponds to a gaseous sample formed of humid air with a relative humidity ϕ2 equal to approximately 50% .; and Claim 8: wherein the method of detection according to claim l , wherein the biological objects are chosen from viral particles, bacteriophages, bacteria and their spores, archaea, microscopic fungi and their spores, unicellular protozoa, blood or non-circulating cells, circulating vesicles, exosomes, pollens, biological objects comprising a synthetic particle to which at least one ligand or biological protein is attached, [0032], In general, the compounds of interest ( analytes ) are elements intended to be characterized by the electronic nose, and contained in a gaseous sample. They can be, by way of illustration, bacteria, viruses, proteins, lipids, volatile organic molecules, inorganic compounds, among others.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE T MUI whose telephone number is (571)270-3243. The examiner can normally be reached M-Th 5:30 -15:30 EST.
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CTM
/CHRISTINE T MUI/Primary Examiner, Art Unit 1797
