DETAILED ACTION
Claims 1-20 are currently pending.
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 .
Priority
This application claims benefit as a CON of 17/169,765 (filed 2/8/2021; now U.S. Patent No. 12/066,445) which claims benefit from provisional U.S. Application No. 61/944, 707 (filed 2/26/2014) and claims benefit from provisional U.S. Application No. 62/072,404 (filed 10/29/2014).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7-17, 20-21, 25-27 and 34-36 of U.S. Patent No. 10,928,404 (“US ‘404”). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claims 1, 3 and 34 of US ‘404 claim the following:
A method for separating a heterogeneous population of cells, the method comprising the steps of: placing a microcapillary channel containing a sample of the heterogeneous population of cells in a magnetically-responsive medium into a levitation system, wherein the system comprises a set of two magnets producing a magnetic field, wherein a space between the two magnets is sized to receive the microcapillary channel in a horizontal orientation relative to the direction of gravity, wherein the magnetic field is spatially constant over a distance of the microcapillary channel between the two magnets; and a microscopy device having a stage between the set of two magnets on which the microcapillary channel is placed; and levitating the heterogeneous population of cells in the magnetically-responsive medium by balancing a magnetic force applied to each of the cells by the magnetic field of the magnets with a corrected gravitational force of the cells in the magnetically-responsive medium, thereby separating the heterogeneous population of cells.
3. The method of claim 1, further comprising the step of separating the individual cells to an equilibrium exhibiting a balance between gravitational forces and magnetic forces on the individual cell.
34. A method for real-time interrogation of cells, the method comprising the steps of: placing a microcapillary channel containing a sample of the heterogeneous population of cells in a magnetically-responsive medium into a levitation system, wherein the system comprises a set of two magnets producing a magnetic field, wherein a space between the two magnets is sized to receive the microcapillary channel in a horizontal orientation relative to the direction of gravity, wherein the magnetic field is spatially constant over a distance of the microcapillary channel between the two magnets; and a microscopy device having a stage between the set of two magnets on which the microcapillary channel is placed; and levitating the heterogeneous population of cells in the magnetically-responsive medium by balancing a magnetic force applied to each of the cells by the magnetic field of the magnets with a corrected gravitational force of the cells in the magnetically-responsive medium, thereby separating the heterogeneous population of cells; and altering magnetic properties of the magnetically-responsive medium.
Thus, claims 3 and 34 anticipate instant claim 1.
Claim 2 of US ‘404 reads on instant claim 2.
Claims 4-5 of US ‘404 read on instant claims 3 and 4, respectively.
Claims 7-14 of US ‘404 read on instant claims 5-12, respectively.
Claims 16 and 17 of US ‘404 read on instant claims 15 and 13, respectively.
Claims 20-21 of US ‘404 read on instant claims 16-17, respectively.
Claims 25-27 of US ‘404 read on instant claims 18-20, respectively.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 and 6-17 of U.S. Patent No. 12,066,445 (“US ‘445”). Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘445 is likewise directed to a method for separating a heterogeneous population of cells.
Claim 1 of US ‘445 claims the following method:
1. A method for separating a heterogeneous population of cells, the method comprising the steps of: placing a channel containing a sample of the heterogeneous population of cells in a magnetically-responsive medium into a levitation system, wherein the system comprises a set of two magnets producing a magnetic field, wherein a space between the two magnets is sized to receive the channel; and a microscopy device having a stage between the set of two magnets on which the channel is placed; and levitating the heterogeneous population of cells in the magnetically-responsive medium by balancing a magnetic force applied to each of the cells by the magnetic field of the magnets with a corrected gravitational force of the cells in the magnetically-responsive medium, thereby separating the heterogeneous population of cells; separating the individual cells to an equilibrium exhibiting a balance between only gravitational forces and magnetic forces on the individual cell; and obtaining an image of the heterogeneous population of cells using the microscopy device and analyzing the image to characterize the heterogeneous population of cells.
Claim 1 of US ‘445 thus renders obvious instant claim 1.
Claims 2-4 of US ‘445 read on instant claims 2-4, respectively.
Claim 6 of US ‘445 reads on instant claim 5.
Claims 7-11 of US ‘445 read on instant claims 7-11, respectively.
Claims 12 and 13 of US ‘445 read on instant claims 14-15.
Claims 14-17 of US ‘445 read on instant claims 12, 13, 16 and 17, respectively.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: claim 1 recites the following method:
A method for separating a heterogeneous population of cells, the method comprising the steps of: placing a channel containing a sample of the heterogeneous population of cells in a magnetically-responsive medium into a levitation system in a horizontal orientation relative to a direction of gravity in which the levitation system produces a magnetic field that is spatially constant over a distance of the channel; levitating the heterogeneous population of cells in the magnetically-responsive medium by balancing a magnetic force applied to each of the cells by the magnetic field with a corrected gravitational force of the cells in the magnetically-responsive medium, thereby separating the heterogeneous population of cells; and separating the individual cells to an equilibrium exhibiting a balance between only corrected gravitational forces and magnetic forces on the individual cell.
As set forth in the Reasons for Allowance in parent Applications 15/151,646 (now US 10,928,404) and 17/169,765 (now US 12,066,445), Applicant’s invention differed from the closest prior art, Watarai et al., (Journal of Chromatography A, 961 (2002) 3-8; see PTO-892), specifically regarding the limitation requiring the magnetic field is “spatially constant over a distance of the microcapillary channel between the two magnets”. Applicant’s invention differentiates over Watarai given that Watarai’s Fig. 1 illustrates a magnetic gradient exists in the x-axis given the additional iron (Fe) tips enhance the magnetic field where the capillary crosses the iron tips (3.2 Apparatus, left column, first full paragraph, page 5).
Additionally, Watarai’s method differed from the instant invention since Watarai’s method includes frictional force applied by the fluid flow and thus does not exhibit a balance between only gravitational forces and magnetic forces on the individual cell, as recited in claim 1.
Conclusion
No claim is allowed.
Examiner Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to E. YVONNE PYLA whose telephone number is (571)270-7366. The examiner can normally be reached M-F 9am - 6pm.
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E. YVONNE PYLA
Primary Examiner
Art Unit 1633
/EVELYN Y PYLA/Primary Examiner, Art Unit 1633
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