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
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: “light incident mechanism configured to enable light to be incident”, in claim 5; “light detection mechanism configured to detect”, in claim 5.
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 § 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.
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over ROBOTTI et al. (EP 1724584 A1), hereafter Robotti in view of Tanaka et al. (JP 2016/114357 A), hereafter Tanaka.
Regarding claim 1, Robotti teaches an optical device (Fig. 1 element 104, [0060]) comprising:
a substrate (Figs. 1-2 element 110) configured to transmit light, [0060];
a reflective layer (Figs. 1-2 element 112, [0060]) disposed on the substrate (110), [0065, 0088];
an optical waveguide layer (Figs. 1-2 elements 116 + 118 and/or 113, [0086]) configured to propagate the transmitted light transmitted through the reflective layer (112) or near-field light bled from the reflective layer, the optical waveguide layer (116 + 118 and/or 113) being located on the reflective layer (112), (as shown in Figs. 1-2) and having a surface provided with a functional group, [0068, 0072] that immobilizes a capturing body that captures a specimen, (Figs. 1-2 element 102 + 106 “ligand + “triazole ring linker moiety”, [0060-0061]) ; and
a wavelength adjustment layer (Fig. 1 element 114 and/or silicon nitride layer) located on the substrate side, the optical waveguide layer side, or both the substrate side and the optical waveguide layer side of the reflective layer, (silicon nitride layer bound to the light transmissive support (110), [0066] Also element 114 function as a wavelength adjustment layer since the thickness/ index of refraction allows for fine-tuning the resonant wavelength, [0096]), and configured to shift a peak wavelength the light reflected by a surface of the reflective layer (112) on the optical waveguide layer side (116 + 118 and/or 113), (as shown in Figs. 1-2) or a surface of the optical waveguide layer (116 + 118 and/or 113) on a side opposite to the reflective layer (112), under a total reflection condition, [0006, 0093].
Robotti is silent about a wavelength adjustment layer configured to shift a peak wavelength in a waveform indicating a first relationship between (i) a wavelength of the light and (ii) an intensity of the light reflected.
However, Tanaka related to biosensor devices and thus from the same field of endeavor teaches a wavelength adjustment layer (Fig. 1 element 2), [page 5, para 3] configured to shift a peak wavelength in a waveform indicating a first relationship between (i) a wavelength of the light and (ii) an intensity of the light reflected, (as shown in Figs. 2 and 4-6 “spectrum distribution of light “, the wavelength shifted based on the adjustment layer 2 in the sensor and the interaction with the sample, [page 7, para. 10], [page 8, para 1-2]).
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Robotti by including detecting optical chirality, wherein the dielectric material is transparent incident circularly polarized light (as taught by Tanaka) for several advantages such as: allowing to determine the presence or absence of an antigen-antibody 24 reaction by a simple operation without requiring a high level of proficiency, thus increase the device efficiency, ([page 4, lines 24-27, Tanaka).
Regarding claim 2, Robotti in the combination outlined above teaches the optical device according to claim 1.
Even though Robotti teaches the reflective layer), (Fig. 1 element 12), ( the wavelength adjustment layer) (Fig. 1 element 114 and/or silicon nitride layer) and the(the optical waveguide layer), (Fig. 1 elements 116 + 118 and/or 113). Robotti is silent about the relation expression of refractive index of the layers.
However, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05 Section II-A).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the index of refraction (as taught by the modified device of Robotti) with wherein the following relational expression is satisfied: (refractive index of the reflective layer), > (refractive index of the wavelength adjustment layer) > (refractive index of the optical waveguide layer), without deviating from the general teaching concept of Robotti, since such modification constitutes only a change of form, proportions, or degree, which has been held to be a matter of obviousness (see MPEP 2144.05 Section II-A) in order to attain a particular design choice and as result of routine optimization in order to optimize sensor performance, specifically by enhancing sensitivity, improving detection accuracy, or minimizing background noise.
Regarding claim 3, Robotti in the combination outlined above teaches the optical device according to claim 1.
Robotti further teaches wherein a film thickness of the wavelength adjustment layer (Fig. 1 element 114 and/or silicon nitride layer, [0066]) is smaller than a film thickness of the reflective layer (Fig. 1 element 112, [0065]), [0065-0066], Additionally, it is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions (see MPEP 2144.05 Section II-A).
Regarding claim 5, Robotti teaches a biosensor (Fig. 1 element 100, and Fig. 2) comprising: the optical device (Fig. 1 element 104) according to claim 1.
Robotti further teaches a light incidence mechanism (Fig. 1 element 120) configured to enable light to be incident the reflective layer(Figs. 1-2 element 112), from a surface opposite to a surface of the substrate (Figs. 1-2 element 110) on which the reflective layer is located in the optical device (104), (as shown in Figs. 1-2, [0061]); and
a light detection mechanism (Fig. 2 element 144) configured to detect the reflected light (Fig. 2 element 152) of the light reflected on a surface of the reflective layer (112) on the side of the optical waveguide layer (113 and/or 116 + 118) or a surface of the optical waveguide layer opposite to the reflective layer under the total reflection condition, [0087-0088].
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Robotti in view Tanaka and in further view of Blair et al. (US 2016/0355869 A1), hereafter Blair.
Regarding claim 4, Robotti in the combination outlined above teaches the optical device according to claim 1.
The modified device of Robotti fail to teach wherein the wavelength adjustment layer contains SiON.
However, Blair related to biosensor devices and thus from the same field of endeavor teaches wherein the wavelength adjustment layer (Fig. 1a element 96) contains SiON, [0079].
Therefore, it would been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the modified device of Robotti by including wherein the wavelength adjustment layer contains SiON (as taught by Blair) for several advantages such as: allowing to enhance fluorescence excitation thus improved by surface plasmon cross-coupling, ([0079, Blair).
Allowable Subject Matter
Claim 6 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding Claim 6, the prior art of record, taken either alone or in combination, fails to disclose, teach, or suggest or render obvious “A method of setting a film thickness of the wavelength adjustment layer of the optical device according to claim 1, the method comprising: measuring for an optical device not comprising the wavelength adjustment layer while changing the wavelength of the light, a first reflection intensity, obtained when the light is incident on the substrate with the specimen being captured by the capturing body, on a surface of the reflective layer on the side of the optical waveguide layer or a surface of the optical waveguide layer opposite to the reflective layer and a second reflection intensity, obtained when the light is incident on the substrate without the specimen being captured, on the surface of the reflective layer on the side of the optical waveguide layer or the surface of the optical waveguide layer opposite to the reflective layer; identifying a peak wavelength in a characteristic waveform indicating a difference between the first reflection intensity and the second reflection intensity measured in the measuring of the first reflection intensity and the second reflection intensity; and setting a film thickness of the wavelength adjustment layer by referring to a second relationship between the peak wavelength in the characteristic waveform and the film thickness obtained in advance, based on the peak wavelength identified in the identifying of the peak wavelength.”, in the combination required by the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Pyo et al. (US 2008/0130004 A1), discloses a surface plasmon resonance imaging sensor capable of performing calibration of changes in thickness and index of refraction of transparent substrate; a first prism and a second prism.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS G PEREZ-GUZMAN whose telephone number is (571)272-3904. The examiner can normally be reached Monday - Friday 7:30 am - 5:00 pm ET.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Tarifur Chowdhury can be reached at (571) 272-2287. 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.
/TARIFUR R CHOWDHURY/ Supervisory Patent Examiner, Art Unit 2877
/CARLOS PEREZ-GUZMAN/ Examiner, Art Unit 2877