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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a) because Fig. 5 fails to show “device 12” and “sample material 21” as described in the specification (6:10 and 6:20). Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim 29 is 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.
Claim 29 recites “moving the sampling from a first discrete spot”. There is insufficient antecedent basis for this limitation in the claim.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12125693B2 (‘693). Although the claims at issue are not identical, they are not patentably distinct from each other.
Claim 1 of the ‘693 patent recites the same method steps as instant claim 21 and further requires “repeating the method at least a second discrete spot of the plurality of discrete spots on the substrate.” Repeating the previously recited method at a second spot does not require a materially different method or apparatus and therefore does not patentably distinguish claim 1 of the ‘693 patent from instant claim 21. Moreover, instant claim 29 recites “moving the sampling [probe] from a first discrete spot to a second discrete spot; and repeating the method steps” which is substantially coextensive with the final limitation of claim 1 of the ‘683 patent. Further comparisons of claims at issues are demonstrated in the claim chart below.
Instant application (18/907,844)
U.S. Patent No. 12125693B2
21. A method for conducting reactions and screening for reaction products, the method comprising:
providing a substrate comprising a plurality of discrete spots;
directing a liquid droplet spray discharge from a sampling probe onto a first discrete spot of the plurality of discrete spots on the substrate, wherein the first discrete spot comprises reagents for a reaction, wherein the liquid droplet spray discharge also comprises one or more reagents for the reaction and the liquid droplet spray discharge desorbs the reagents from the first discrete spot of the plurality of discrete spots on the substrate;
conducting a reaction among the reagents on the substrate and the reagents from the liquid droplet spray discharge in the liquid droplet spray discharge as the liquid droplets evaporate, thereby generating at least one ionized reaction product; and
analyzing the ionized reaction product.
1. A method for conducting reactions and screening for reaction products, the method comprising:
providing a substrate comprising a plurality of discrete spots;
directing a liquid droplet spray discharge from a sampling probe onto a first discrete spot of the plurality of discrete spots on the substrate, wherein the first discrete spot comprises reagents for a reaction, wherein the liquid droplet spray discharge also comprises one or more reagents for the reaction and the liquid droplet spray discharge desorbs the reagents from the first discrete spot of the plurality of discrete spots on the substrate;
conducting a reaction among the reagents on the substrate and the reagents from the liquid droplet spray discharge in the liquid droplet spray discharge as the liquid droplets evaporate, thereby generating at least one ionized reaction product;
analyzing the ionized reaction product; and
repeating the method at least a second discrete spot of the plurality of discrete spots on the substrate.
22. The method according to claim 21, wherein the sampling probe is a desorption electrospray ionization probe and the liquid droplet spray discharge is a desorption electrospray ionization active discharge.
2. The method according to claim 1, wherein the sampling probe is a desorption electrospray ionization probe and the liquid droplet spray discharge is a desorption electrospray ionization active discharge.
23. The method according to claim 21, wherein analyzing comprises:
receiving the ionized reaction product to a mass spectrometer; and
conducting a mass spectral analysis of the ionized reaction product in the mass spectrometer.
3. The method according to claim 1, wherein analyzing comprises:
receiving the ionized reaction product to a mass spectrometer; and
conducting a mass spectral analysis of the ionized reaction product in the mass spectrometer.
24. The method according to claim 23, wherein the mass spectrometer is a bench-top mass spectrometer or a miniature mass spectrometer.
4. The method according to claim 3, wherein the mass spectrometer is a bench-top mass spectrometer or a miniature mass spectrometer.
25. The method according to claim 21, wherein a rate of the reaction among the reagents in the liquid droplet spray discharge is accelerated as compared to a rate of the reaction among the reagents in a bulk liquid.
5. The method according to claim 1, wherein a rate of the reaction among the reagents in the liquid droplet spray discharge is accelerated as compared to a rate of the reaction among the reagents in a bulk liquid.
26. The method according to claim 21, wherein the substrate is a movable substrate.
6. The method according to claim 1, wherein the substrate is a movable substrate.
27. The method according to claim 26, wherein the method further comprises:
moving the substrate from a first discrete spot to a second discrete spot; and
repeating the method steps.
7. The method according to claim 6, wherein the method further comprises:
moving the substrate from a first discrete spot to a second discrete spot; and
repeating the method steps.
28. The method according to claim 21, wherein the sampling probe is operably coupled to a movable arm.
8. The method according to claim 1, wherein the sampling probe is operably coupled to an movable arm.
29. The method according to claim 28, wherein the method further comprises:
moving the sampling from a first discrete spot to a second discrete spot; and
repeating the method steps.
9. The method according to claim 8, wherein the method further comprises:
moving the sampling from a first discrete spot to a second discrete spot; and
repeating the method steps.
30. The method of claim 21, wherein each of the plurality of discrete spots on the substrate comprise different reagents for a reaction.
10. The method of claim 1, wherein each of the plurality of discrete spots on the substrate comprise different reagents for a reaction.
Conclusion
Claims 21-28 and 30 would be allowable if the double patenting rejection is overcome. Claim 29 would be allowable if the double patenting rejection is overcome, and if rewritten to overcome the rejection (s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office Action and to include all the limitations of the base claim and any intervening claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JING WANG whose telephone number is (571)272-2504. The examiner can normally be reached M-F 7:30-17:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Kim can be reached at 571-272-2293. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JING WANG/Examiner, Art Unit 2881
/DAVID E SMITH/Examiner, Art Unit 2881
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