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 .
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.
Claim Status
This action is in response to application filed on January 06, 2025. Claims 1-20 are pending for examination.
Claim Objections
Claims 1, 8 and 15 are objected to because of the following informalities: Claims 1, 8 and 15 recite “wherein the monitoring device, the lysis function, and the plurality of sensors” which appears to be a typographical error of “wherein the monitoring device, the lysis function device, and the plurality of sensors”. Appropriate correction is required.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,190,700 (reference application) respectively. Claims 1-20 are generally method/broader claims than the respective system claims 1-20 in U.S. Patent No. 12,190,700. Broader claims in a later application constitute obvious double patenting of narrow claims in an issued patent. See In re Van Ornum and Stang, 214, USPQ 761, 766, and 767 (CCPA) (the court sustained an obvious double patenting rejection of generic claims in a continuation application over narrower species claims in an issued patent); In re Vogel, 164 USPQ 619, 622, and 623 (CCPA 1970) (generic application claim specifying "meat" is obvious double patenting of narrow patent claim specifying "pork").
Reference application claim 1 corresponds to instant claim 1,
reference application claim 2 corresponds to instant claim 2,
reference application claim 3 corresponds to instant claim 3,
reference application claim 4 corresponds to instant claim 4,
reference application claim 5 corresponds to instant claim 5,
reference application claim 6 corresponds to instant claim 6,
reference application claim 7 corresponds to instant claim 7,
reference application claim 8 corresponds to instant claim 8,
reference application claim 9 corresponds to instant claim 9,
reference application claim 10 corresponds to instant claim 10,
reference application claim 11 corresponds to instant claim 11,
reference application claim 12 corresponds to instant claim 12,
reference application claim 13 corresponds to instant claim 13,
reference application claim 14 corresponds to instant claim 14,
reference application claim 15 corresponds to instant claim 15,
reference application claim 16 corresponds to instant claim 16,
reference application claim 17 corresponds to instant claim 17,
reference application claim 18 corresponds to instant claim 18,
reference application claim 19 corresponds to instant claim 19, and
reference application claim 20 corresponds to instant claim 20.
Claims 1, 2, 6, 8, 9 and 13 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 (reference application) respectively. Claims 1, 2, 6, 8, 9 and 13 are generally broader than the claim 1 in U.S. Patent No. 11,869,239. Broader claims in a later application constitute obvious double patenting of narrow claims in an issued patent. See In re Van Ornum and Stang, 214, USPQ 761, 766, and 767 (CCPA) (the court sustained an obvious double patenting rejection of generic claims in a continuation application over narrower species claims in an issued patent); In re Vogel, 164 USPQ 619, 622, and 623 (CCPA 1970) (generic application claim specifying "meat" is obvious double patenting of narrow patent claim specifying "pork").
Claims 3, 7, 10, 14-17 and 20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 in view of Harrison et al. (Harrison : US 6356234).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter except “wherein the printed component is comprised of at least allotrope of carbon” or “wherein the printed component is comprised of at least of two-dimensional inorganic compounds”.
However, the preceding limitation is known in the art of printing electronic circuits. Harrison teaches wherein the printed component is comprised of at least allotrope of carbon (Col 2 lines 55-60), and wherein the printed component is comprised of at least of two-dimensional inorganic compounds (Col 2 lines 55-60: titanium oxide and col. 2 lines 31-51: Ink layers deposited by the preferred lithographic printing process are about 5 micrometres (5.times.10.sup.-6 m) thick. … When printed lithographically, the resulting ink films consist of a "pebble dash" of conductive particles distributed on the substrate surface. . Since the ink has a thickness spread over a surface, it has at least two dimensions).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Harrison for the benefit of cost advantages and environmental benefits (Col. 1 lines 35-36).
Claims 4 and 11 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 in view of Yeager et al. (Yeager: US 2015/0363280).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter except “a power source coupled to the remote monitoring device, wherein the power source includes at least one battery, a photovoltaic cell and an antenna for receiving electromagnetic energy”.
However, the preceding limitation is known in the art of sensing devices: Yeager teaches a sensing device (Fig. 1, 110, 178) including a power source coupled to the remote monitoring device, wherein the power source includes at least one battery, a photovoltaic cell and an antenna for receiving electromagnetic energy (Fig. 1, 140, 142, 144, 145 ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Yeager as a known implementation in the base sensor devices with the predictable result of supplying the operating voltage for the circuit.
Claims 5 and 12 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 in view of Lomas et al. (Lomas: US 20060110819 A1 ).
Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter except “at least one van der Waals material component coupled to the lysis function device and configured to bind the released cell content of the collected sample to complementary cell content bound to the surface of the plurality of sensors through predetermined van der Waal forces.”.
However, Lomas teaches at least one van der Waals material component coupled to the lysis function device and configured to bind the released cell content of the collected sample to complementary cell content bound to the surface of the plurality of sensors through predetermined van der Waal forces (para 51 and para 147: Adsorbents that are useful for observing hydrogen bonding and/or van der Waals forces based on hydrophilic interactions include surfaces comprising normal phase adsorbents such as silicon-oxide (i.e., glass). …Most proteins will bind hydrophilic interaction adsorbents because of a group or combination of amino acid residues (i.e., hydrophilic amino acid residues) that bind through hydrophilic interactions involving hydrogen bonding or van der Waals forces. Examples of proteins that will bind hydrophilic interaction adsorbents include myoglobin, insulin and cytochrome C and para 108: Sonicating devices produce high frequency waves that cause cell membranes to rupture, causing the contents of the cell to be released. ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lomas in order to capture and analysis of one or more biomolecules in a single step (Lomas: para 2).
Claim 18 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 in view of Harrison further in view of Yeager.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter except “a power source coupled to the remote monitoring device, wherein the power source includes at least one battery, a photovoltaic cell and an antenna for receiving electromagnetic energy”.
However, the preceding limitation is known in the art of sensing devices: Yeager teaches a sensing device (Fig. 1, 110, 178) including a power source coupled to the remote monitoring device, wherein the power source includes at least one battery, a photovoltaic cell and an antenna for receiving electromagnetic energy (Fig. 1, 140, 142, 144, 145 ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Yeager as a known implementation in the base sensor devices with the predictable result of supplying the operating voltage for the circuit.
Claim 19 is rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,869,239 in view of Harrison further in view of Lomas.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are claiming the same subject matter except “at least one van der Waals material component coupled to the lysis function device and configured to bind the released cell content of the collected sample to complementary cell content bound to the surface of the plurality of sensors through predetermined van der Waal forces.”.
However, Lomas teaches at least one van der Waals material component coupled to the lysis function device and configured to bind the released cell content of the collected sample to complementary cell content bound to the surface of the plurality of sensors through predetermined van der Waal forces (para 51 and para 147: Adsorbents that are useful for observing hydrogen bonding and/or van der Waals forces based on hydrophilic interactions include surfaces comprising normal phase adsorbents such as silicon-oxide (i.e., glass). …Most proteins will bind hydrophilic interaction adsorbents because of a group or combination of amino acid residues (i.e., hydrophilic amino acid residues) that bind through hydrophilic interactions involving hydrogen bonding or van der Waals forces. Examples of proteins that will bind hydrophilic interaction adsorbents include myoglobin, insulin and cytochrome C and para 108: Sonicating devices produce high frequency waves that cause cell membranes to rupture, causing the contents of the cell to be released. ).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Lomas in order to capture and analysis of one or more biomolecules in a single step (Lomas: para 2).
Allowable Subject Matter
Claims 1-20 would be allowable for the similar reasons in the allowed parent case 18/402545 if they overcome the double patenting rejections and the claims objections as set forth above.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nay Tun whose telephone number is (571)270-7939. The examiner can normally be reached on Mon-Thurs from 9:00-5:00. If attempts to reach the examiner by telephone are unsuccessful, the examiner's Supervisor, Steven Lim can be reached on (571) 270-1210. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/Nay Tun/Primary Examiner, Art Unit 2688