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 .
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 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.
DETAILED ACTION
This is an AIA application filed August 9, 2024.
The earliest effective filing date of this AIA application is seen as August 11, 2023, the date of the earliest priority application (United States provisional patent application serial number 63/532,219) for any claims which are fully supported under 35 U.S.C. 112(a) by the provisional application.
The effective filing date of this AIA application is seen as August 9, 2024, the actual filing date, for any claims that are not fully supported by the foregoing provisional or non-provisional application(s).
The present application is also related to the applications giving rise to the following patent publication(s) (some redundancy may be present):
Office
Application
App. Date
Pub. #
Pub. Date
US
PCT/US24/41616
08/09/2024
WO 2025038408 A2
WO 2025038408 A3
02/20/2025
04/03/2025
AU
2024325366
08/09/2024
AU 2024325366 A1
02/12/2026
EP
24854684
08/09/2024
EP 4735872 A2
05/06/2026
The claims originally filed August 9, 2024 are entered, currently outstanding, and subject to examination.
This action is in response to the information disclosure statement/IDS filing of February 26, 2026.
Claims 1-10 are currently pending and outstanding.
No claims have been amended, cancelled, withdrawn, or added.
Claims 1-10 are currently outstanding and subject to examination.
This is a non-final action and is the first action on the merits.
Allowable subject matter is not indicated below.
Often, in the substance of the action below, formal matters are addressed first, claim rejections second, and any response to arguments third.
Special Definitions for Claim Language - MPEP § 2111.01(IV)
No special definitions as defined by MPEP § 2111.01(IV) are seen as present in the specification regarding the language used in the claims. Consequently, the words and phrases of the claims are given their plain meaning. MPEP §§ 2173.01, 2173.05(a), and 2111.01.
If special definitions are present, Applicant should bring those to the attention of the examiner and the prosecution history with its next response in a manner both specific and particular. In doing so, there will be no mistake, confusion, and/or ambiguity as to what constitutes the special definition(s). Per above, such special definitions must conform to the requirements of MPEP § 2111.01(IV).
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.
Claims 1-9 are rejected under 35 U.S.C. § 102(a) as being anticipated by U.S. Patent No. 5851840 of Sluka et al. (Sluka, cited by Applicant).
With respect to claim 1, Sluka discloses a sensing layer composition comprising:
a silane mixture comprising:
one or more fluoro-containing silanes; and optionally, tetramethoxysilane,
wherein the sensing layer composition is adapted to be adhered to at least one side of one or more waveguide channels in/on a waveguide chip of an interferometric system (seen as so adapted), and
wherein the sensing layer composition is adapted to bind or otherwise be selectively disturbed by one or more analytes (seen as so adapted).
Sluka teaches a sensing layer composition using a silane mixture (Abstract, The invention concerns a binding matrix containing a carrier material; col 3, In 20-23, An analytical element is obtained in this manner which, like the binding matrix, can serve to detect free analytes; col 24, In 28-54, Example 8. Application of biotinsilanes on oxidic surfaces... 8.3 Process for coating oxidic surfaces... silanes or mixtures thereof are dissolved... The test piece to be coated which had been prepared according to 8.1 is coated with this solution in a closed vessel under a methanol Saturated inert gas atmosphere. Hence, the binding matrix/layer is adapted to sense/detect analytes and is therefore a sensing layer.)
The silane mixture comprises one or more fluoro-containing silanes (col. 25, ll. 13 et seq., 9.2.1 Uniformly functionalized surfaces... All silanes were applied according to 8.3 except fluorosilanes ... chloroform was used as the solvent for fluorosilane... Surface... Si02 + 1H, 1H, 2H, 2H-perfluorodecyltrichlorosilane, Layer thickness... 2.6 nm)
With respect to claim 2, Sluka as set forth above discloses the sensing layer composition of claim 1, including one wherein
the interferometric system is an optical interferometric system.
Claim 2 requires a device constructed according to its immediate parent claim, claim 1, to be operated in a certain manner.
The manner of operating the device does not differentiate an apparatus claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). MPEP § 2114(II).
Consequently, claim 2 is rejected on the same grounds as its immediate parent claim, claim 1, as not being differentiated from it.
With respect to claim 3, Sluka as set forth above discloses the sensing layer composition of claim 1, including one wherein
the sensing layer composition is formulated as a fluorinated film (the first table of col. 25 has the fluorosilane thicknesses as 2.6 and 2.0 nm which seems to be a film. See also the top of col. 7 re “close packed film”.).
With respect to claim 4, Sluka as set forth above discloses the sensing layer composition of claim 1, including one wherein
the sensing layer composition relies on noncovalent interactions that occur between highly fluoro-containing substances for binding and detection of one or more analytes.
For product and apparatus claims, when the structure recited in the reference is substantially identical to that of the claims, claimed properties and/or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). MPEP § 2112.01(I).
Consequently, because Sluka as set forth above as set forth above provides the structure of claim 1, the combination is seen as also providing the same claimed properties or functions of claim 1.
Unsupported features are seen to directly result from the supported/claimed structures. No authority is known by which unsupported or “naked” functions/characteristics/features can be claimed and subject to exclusive protection.
Below, this analysis is referred to as “same product/same features”.
With respect to claim 5, Sluka as set forth above discloses the sensing layer composition of claim 1, including one wherein
the one or more analytes that may be detected include at least one fluoro-containing substance.
Same product/same features.
With respect to claim 6, Sluka as set forth above discloses the sensing layer composition of claim 1, wherein the one or more analytes includes perfluoroalkyl,
polyfluoroalkyl substances (pfas),
or a combination thereof.
Same product/same features.
With respect to claim 7, Sluka as set forth above discloses the sensing layer composition of claim 6, including one wherein
the polyfluoroalkyl substances (pfas) is selected from the group consisting of perfluorooctanoic acid (pfoa),
perfluorooctane sulfonic acid (pfos),
perfluorononanoic acid (pfna),
hexafluoropropylene oxide dimer acid (hfpo-da),
perfluorohexane sulfonic acid (pfhxs), and
perfluorobutane sulfonic acid (pfbs).
Same product/same features.
With respect to claim 8, Sluka as set forth above discloses the sensing layer composition of claim 1, including one wherein
the one or more fluoro-containing silanes is present in the silane mixture in an amount of at least about 0.1% w/w based on the total weight of the silane mixture.
Col. 24, In 55-col 25, In 35: Example 9, Results of the analyses (white light interferometry). In the case of white-light interferometry measurements protein solutions were pumped through a Teflon cuvette... 9.2.1 Uniformly functionalized surfaces... All silanes were applied according to 8.3 except fluorosilanes... chloroform was used as the solvent for fluorosilane... Surface... Si02 + 1H, 1H, 2H, 2H-perfluorodecyltrichlorosilane, Layer thickness... 2.6 nm. Hence, the fluoro-containing silane comprises 100% w/w of the silane mixture as it comprises the entire silane mixture.
With respect to claim 9, Sluka as set forth above discloses the sensing layer composition of claim 1, wherein the silane mixture optionally includes tetramethoxysilane in an amount of at least about 0.1% w/w to about 50% w/w based on the total weight of the silane mixture.
As the stated mixtures of section 9.2.1 at col. 25, l. 13 contain no tetramethoxysilane, they omit the optional component.
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 of this title, 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.
Claim 10 is rejected under 35 U.S.C. § 103 as being unpatentable over Sluka as set forth above.
With respect to claim 10, Sluka as set forth above discloses the sensing layer composition of claim 1, but not one wherein
the silane mixture includes from about 20% w/w to about 80% w/w of one or more fluoro-containing silanes and from about 20% w/w to about 80% w/w tetramethoxysilane based on the total weight of the silane mixture.
Sluka teaches the sensing layer composition of claim 1, but does not specifically teach wherein the silane mixture includes from about 20% w/w to about 80% w/w of one or more fluoro-containing silanes and from about 20% w/w to about 80% w/w tetramethoxysilane based on the total weight of the silane mixture. However, Sluka teaches wherein the silane mixture includes one fluoro-containing silane (col 24, In 55-col 25, In 35, (All silanes were applied according to 8.3 except fluorosilanes... chloroform was used as the solvent for fluorosilane... Surface... Si02 + 1H, 1H, 2H, 2H-perfluorodecyltrichlorosilane, Layer thickness... 2.6 nm) and wherein the mixture may include a polymer comprising a silane group that is tetrafunctional and comprises a tetramethoxy functional group (col 9, In 42-46, The coating of oxidic surfaces with silanes is carried out by contacting a solution of the silane compound or of a mixture of silane compounds with a previously cleaned oxidic surface; col 4, In 25-42, On the other hand the anchor group can also be formed by reaction of the oxidic carrier material with a surface reactive silane group of the general formula (II)... Specific examples of reactive silane terminal group of formula (II) are tetramethyldisilanoxy or tetramethoxydisilanoxy groups. The silane group (II) is preferably a tetrafunctional group i.e., all 4 substituents can react with the oxidic surface, e.g., tetramethoxydisilanoxy.
Based on the teachings of Sluka, it would have been obvious to one of skill in the art to include the flouro-containing silane in the mixture in an amount from about 20% w/w to about 80% w/w, utilize tetramethoxysilane as the silane tetrafunctional polymer, and include the tetramethoxysilane in the mixture in an amount of from about 20% w/w to about 80% w/w tetramethoxysilane based on the total weight of the silane mixture to optimize the analyte sensing of the layer. The motivation to use tetramethoxysilane is its compatibility with the disclosure of Sluka and its similarity to the disclosed chemicals.
Further, the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination.
Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol. “Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle.” 325 U.S. at 335, 65 USPQ at 301.).
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious); Ryco, Inc. v. Ag-Bag Corp., 857 F.2d 1418, 8 USPQ2d 1323 (Fed. Cir. 1988) (Claimed agricultural bagging machine, which differed from a prior art machine only in that the brake means were hydraulically operated rather than mechanically operated, was held to be obvious over the prior art machine in view of references which disclosed hydraulic brakes for performing the same function, albeit in a different environment.). MPEP § 2144.07.
Consequently, the recitation of specific materials (here, tetramethoxysilane) is seen as obvious.
Conclusion
Applicant’s publication US 20250052687 A1 published February 13, 2025 is cited.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references have elements related to Applicant’s disclosure and/or claims or are otherwise associated with the other cited references, particularly with respect to sensing devices and related chemical compounds.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JORDAN whose telephone number is (571) 270-1571. The examiner can normally be reached most days 1000-1800 PACIFIC TIME ZONE (messages are returned).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. While examiner does not examine over the phone (see 37 C.F.R. § 1.2), examiner is glad to clarify or discuss issues so long as it forwards prosecution.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas (Tom) HOLLWEG can be reached at (571) 270-1739. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Andrew Jordan/
Primary Examiner, Art Unit 2874
V: (571) 270-1571 (Pacific time)
F: (571) 270-2571
June 27, 2026
Prosecution Insights