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 Rejections - 35 USC § 112
Note that dependent claims will have the deficiencies of base and intervening claims.
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.
Claims 21-34 are 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 21, the sole independent claim, is for “[a] sensing device for sensing fluctuations in a target molecule . . . .[italicizing by the Examiner]” The end of claim 21 recites, “. . . ., wherein the first electrode and second electrode are configured such that a voltage bias can be applied across the gap and fluctuations of the target molecule can be recorded.”
Claim 21 is indefinite because it is not clear what is meant by the phrase “fluctuations in a [or “of the”] target molecule”. What is meant by a fluctuating molecule?
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.
Double Patenting Rejections based on U.S. Patent No. 12,320,797 B2
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 13 together of U.S. Patent No. 12,320,797 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 3 and 13 together of U.S. Patent No. 12,320,797 B2 meet all of the limitations of claim 21 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
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Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 14 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 25 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 25 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 5 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 26 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 26 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 6 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 27 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 27 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 7 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 28 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 28 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 10 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 26 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 29 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 10 together of U.S. Patent No. 12,320,797 B2. Claim 21, from which claim 32 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 32 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 11 together of U.S. Patent No. 12,320,797 B2. Claim 32, from which claim 33 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 33 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 34 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 13, and 12 together of U.S. Patent No. 12,320,797 B2. Claim 32, from which claim 34 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 12,320,797 B2 meet the additional limitation of claim 34 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Double Patenting Rejections based on U.S. Patent No. 11,630,098 B2
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of U.S. Patent No. 11,630,098 B2 meets all of the limitations of claim 21 of the instant application.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 18 of U.S. Patent No. 11,630,098 B2 meets all of the limitations of claim 22 of the instant application. Note that the scope of the claim 18 limitation1 “. . . .; at least one of the first electrode and the second electrode is functionalized with at least one recognition molecule, . . . . [italicizing by the Examiner]” clearly encompasses “. . . .,wherein the first electrode is functionalized with at least one recognition molecule, and wherein the second electrode is functionalized with at least one recognition molecule.”
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because
claim 18 of U.S. Patent No. 11,630,098 B2 meets all of the limitations of claim 23 of the instant application. Note that the scope of the claim 18 limitation “. . . .; at least one of the first electrode and the second electrode is functionalized with at least one recognition molecule, so that the gap is bridged by a target molecule bound by the at least one recognition molecule, thereby completing an electrical circuit. [italicizing by the Examiner]” clearly encompasses “. . . ., wherein the target molecule is bound to the first electrode and the second electrode via each of the at least one recognition molecules bound to each of the first electrode and the second electrode, thereby bridging the gap and completing an electrical circuit.”
Claim 24 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 14 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 24 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 19 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 25 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 26 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 7 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 27 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 28 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 15 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 29 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 30 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 30 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 10 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 31 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 32 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 33 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 34 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 18 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claim 13 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 34 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Double Patenting Rejections based on U.S. Patent No. 10,379,102 B2
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 13 together of U.S. Patent No. 11,630,098 B2 Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 13 of U.S. Patent No. 11,630,098 B2 meet all of the limitations of claim 21 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 22 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 21, from which claim 22 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 2 and 13 of U.S. Patent No. 11,630,098 B2 each meet the additional limitations of claim 22 of the instant application. Note that the scope of the claim 2 and 13 limitation2 “. . . .; at least one of the first electrode and the second electrode is functionalized with at least one recognition molecule, . . . . . [italicizing by the Examiner]” clearly encompasses “. . . ., wherein the first electrode is functionalized with at least one recognition molecule, and wherein the second electrode is functionalized with at least one recognition molecule.”
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 5, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 21, from which claim 26 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 5 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 26 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 6, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 21, from which claim 27 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 27 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 7, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 21, from which claim 28 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 28 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 30 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 8, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 212 from which claim 30 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 30 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 9, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 22, from which claim 31 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 31 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 12, and 13 together of U.S. Patent No. 11,630,098 B2.
Claim 21, from which claim 32 depends, has been addressed above. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 32 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Double Patenting Rejections based on U.S. Patent No. 11,959,905 B2
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 3 and 16 together of U.S. Patent No. 11,630,098 B2 meet all of the limitations of claim 21 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 17, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 25 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 6, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 6 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 26 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 7, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 7 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 27 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 28 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 8, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 28 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 11, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 29 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3, 12, and 16 together of U.S. Patent No. 11,630,098 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 12 of U.S. Patent No. 11,630,098 B2 meets the additional limitation of claim 32 of the instant application. Note that it would have been obvious to one of ordinary skill in the art to consider combining together features from dependent claims in a patent, especially when they depend from the same independent claim as they then clearly modify the same base invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 21-30 and 32-34 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. US 8,753,893 B2 (“Liu”) in view of Pang et al., “Fixed-Gap Tunnel Junction for Reading DNA Nucleotides,” ACSNano vol. 8, no. 12, 11994-12003, November 07, 2014, including Supporting Material (“Pang”).
Addressing claims 21 and 32, a sensing device for sensing a target molecule (see the title, Abstract, and Figures 2A, 2B, 3-5, 6A, 6B, 7A, 7B, 8A, 8B, 9A) comprising:
a first electrode (working electrode 30; see col. 7:26-39) and a second electrode (reference electrode 40; see col. 7:26-39) separated by a gap (this gap is defined by the electrical insulator 55 between a given first electrode (working electrode) and the nearest neighboring second electrode (reference electrode). See the figures listed above and see col. 7:26-39.); and
an insulating layer disposed in the gap (note insulating layer 55. Also see Liu col. 7:3-32.).
As for the claim 21 limitation, “. . . .; wherein the first electrode and second electrode are configured such that a voltage bias can be applied across the gap and fluctuations of the target molecule can be recorded…”, Liu does not specifically disclose electrode configuration; however, it is an intended use that the first electrode and the second electrode are clearly capable of performing, if not actually implied as doing so, as Liu does state,
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135
424
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See Liu col. 10:61-67.
Pang discloses a single molecule sensing or detecting device similar to the one set forth in Applicant’s claim 21 as it comprises a first electrode ; and a second electrode separated from the first electrode by a gap, the first electrode and the second electrode having an opening formed therethrough; wherein: at least one of the first electrode and the second electrode is functionalized with a recognition molecule, the recognition molecule having an effective length L1 and configured to selectively bind to a target molecule having an effective length L2. See the Pang title, Abstract, and Figures 1(a) and 2(b). As shown in Figure S2 of Pang Supporting Material the measured current in response to a voltage bias applied to the first electrode and the second electrode will include a fluctuating portion and a background portion. It would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the first electrode and second electrode in the sensing device of Liu be configured such that a voltage bias can be applied across the gap and (current) fluctuations of the target molecule can be recorded, as taught by Pang, because Pang discloses
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434
592
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The sensing device of Liu as modified by Pang as just discussed will then be for sensing fluctuations in a target molecule.
Addressing claims 22-24, for the additional limitations of these claims see the figure inset in the Pang Abstract and Pang Figures 2(b) and 7.
Addressing claim 25, for the additional limitation of this claim note the following on Pang page 11997, “It proved essential to couple one of the electrodes to a reference electrode in contact with the analyte solution (Figure 2b) so that . . . .”
Addressing claims 26-28, for the additional limitations of these claims barring a contrary showing, such as unexpected results, the gap sizes specified in these claims are again just an arbitrary change in size as Liu again discloses
states,
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219
430
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See col. 6:30-41.
Alternatively, for claims 26 and 27 note that Pang discloses, “Thus, 2 nm was chosen as our target size for a fixed tunnel gap.” See Size of the Tunnel Gap., which is on Pang page 11995. Note,” Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close.” See MPEP 2144.05(I).
Addressing claim 29, for the additional limitation of this claim consider in Liu
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See Liu col. 14:28-42.
Clearly the opposite arrangement, that is, having a peptide, polypeptide, or protein be in the test sample and having a corresponding antibody being bound to the working electrode (first electrode) wall is an obvious variant.
Addressing claim 30, for the additional limitation of this claim consider in Liu
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See Liu col. 14:28-42.
Addressing claim 33, as a first matter it will be noted that the additional limitation of this claim, “wherein the background portion of the electrical current is based on a number of non-target molecules adsorbed on the first electrode and/or on the second electrode…”, just appears to be a desired result of using the sensing device of claim 21 and so has little or no patentable weight as it does not seem to further structurally or compositionally modify the sensing device of claim 21. In any event, when the device of Liu as modified by Pang is used it does not appear certain that none of the background current would be based on a number of non-target molecules adsorbed on the first electrode and/or on the second electrode, especially in light of Figure 3(b) of Pang, which shows that “[t]he baseline signal increases with concentration of dAMP consistent with a Langmuir-Hill adsorption isotherm . . . “ Put another way, it does seem likely that wherein the background portion of the electrical current is based on a number of non-target molecules adsorbed on the first electrode and/or on the second electrode.
Addressing claim 34, for the additional limitation of this claim the claimed target molecule concentration range is prima facie obvious as routine optimization of a known result-effective variable (see MPEP 2144.05(II)) as Pang discloses,
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Also, See Pang Figure 3(b) which plots baseline current versus the log of the target molecule concentration.
Claim 31 is rejected under 35 U.S.C. 103 as being unpatentable over Liu as applied to claims 21-30 and 32-34 above, and further in view of Roxin et al., “Flexible or fixed: a comparative review of linear and cyclic cancer-targeting peptides,” Future Med. Chem. (2012) 4(12), 1601-1618 (“Roxin”).
Addressing claim 31, Liu as modified by Pang does not specifically disclose having the recognition molecule comprise a cyclic RGD peptide. Nevertheless, it would have been obvious to one of ordinary skill in the art at the time of the effective filing date of the application to have the recognition molecule comprise a cyclic RGD peptide because Liu does not exclude any type of peptide from being a recognition molecule, and because as disclosed by Roxin
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See page 1612.
So, the use of a cyclic peptide would provide greater selectivity than other recognition molecules for the same targeted receptor that had just one binding site.
Also,
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See Roxin page 1605.
In other words, to have the recognition molecule in the device of Liu as modified by Pang comprise a cyclic RGD peptide would be prima facie obvious as just simple substitution of one known recognition molecule for another with predictable results, namely making the device selectively capable of sensing certain integrins. See MPEP 2143(I)(B).
Other Relevant Prior Art
Merriman et al. US 10,036,064 B2 (“Merriman”) as evidenced by Chen et al., “A protein transistor made of an antibody molecule and two gold nanoparticles,” NATURE NANOTECHNOLOGY |vol 7|March 2012 (“Chen”) disclose a sensing device very similar to that sent forth in at least claim 21 of the instant application. A detailed discussion of Merriman as evidenced by Chen pertinent to the claims of the instant application may be found on pages 13-70 of the Non-final Office action mailed on March 11, 2023 in the application file of parent application 16/917474. Merriman, though, does not disclose “an insulating layer disposed in the gap; . . . .” nor is this feature obvious.
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/ALEXANDER S NOGUEROLA/ Primary Examiner, Art Unit 1795
1 As claim 18 depends from claim 1 it includes all of the limitations of claim 1.
2 As claims 2 and 13 each depend from claim 1 they include all of the limitations of claim 1.
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