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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 03/06/25 has been acknowledged and considered. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,264,361. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of U.S. Patent No. 12,264,361 are anticipated the claims 1-20 of claimed invention of the present invention.
Regarding claim 1; Claim 1 lines 1, 8, and 13-23 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 2; Claim 1 lines 2-11 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 3; Claim 2 lines 1-8 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 4; Claim 3 lines 1-3 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 5; Claim 4 lines 1-19 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 6; Claim 5 lines 1-5 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 7; Claim 6 lines 1-9 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 8; Claim 7 lines 1-11 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 9; Claim 8 lines 1-19 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 10; Claim 9 lines 1-12 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 11; Claim 10 lines 1-10 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 12; Claim 1 lines 1-4 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 13; Claim 12 lines 1-24 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 14; Claim 12 lines 2-9 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 15; Claim 12 lines 5-7 & 13-15 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 16; Claim 13 lines 1-18 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 17; Claim 14 lines 1-16 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 18; Claim 15 lines 1-6 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 19; Claim 18 lines 1-24 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Regarding claim 20; Claim 20 lines 1-20 of U.S. Patent No. 12,264,361 discloses all of feature of claimed invention.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 1-4 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al (US 2019/0198553 hereinafter “Cai” submitted by IDS) in view of Fisher et al (US 2021/0024991 hereinafter “Fisher”).
Regarding claim 1; Cai discloses an image sensor structure (14 @ figure 1), comprising: an array of nanowells (26 @ figure 1 and paragraph [0034]: e.g., The top layer 22 of the passivation stack 24 includes a large array of nanowells 26 disposed thereon. Analytes 28 (such as DNA segments, oligonucleotides, other nucleic-acid chains or the like) may be disposed within the nanowells 26). See figures 1-16
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Cai discloses all of feature of claimed invention except for first primer set disposed throughout a first well region of each nanowell of the array of nanowells; and a different second primer set disposed throughout a second well region of each nanowell of the array of nanowells, the second well region adjacent the first well region at a region interface; wherein the first and second primer sets are operable to attach a forward strand cluster of forward polynucleotide strands in the first well region and to attach an adjacent reverse strand cluster of reverse polynucleotide strands in the second well region. However, Fisher teaches that it is known in the art to provide:
an array of nanowells (28A-28B @ figures 13A-13C and paragraph [0295]: e.g., the depressions 28 are wells. The wells may be micro wells or nanowells);
a first primer set (12A, 12B, 12C, 12 @ figures 1A-1D and paragraph [0196]: e.g., Each of the first primer sets 12A, 12B, 12C, and 12D) disposed throughout a first well region (14 @ figures 1A-1D) of each nanowell of the array of nanowells (28A-28B @ figures 13A-13C and paragraph [0295]); and
a different second primer set (12A’, 12B’, 12C’, 12D’ @ figures 1A-1D and paragraph [0195]: e.g., a second primer set is attached to a second region on the substrate. FIG. 1A through FIG. 1D depict different configurations of the primer sets 12A, 12A ′, 12B, 12B′, 12C, 12C′, and 12D, 12D′ attached to the different regions 14, 16) disposed throughout a second well region (16 @ figures 1A-1D) of each nanowell of the array of nanowells (28A-28B @ figures 13A-13C and paragraph [0295]), the second well region (16 @ figures 1A-1D) adjacent the first well region (14 @ figures 1A-1D) at a region interface (38 @ figure 4B);
wherein the first and second primer sets (12A, 12A’ @ figures 1A) are operable to attach a forward strand cluster (40 @ figure 7E-7F and paragraph [0139]: e.g., Orthogonal cleaving chemistry may be realized through identical cleavage sites that are attached to different primers in the different sets, or through different cleavage sites that are attached to different primers in the different sets. This enables a cluster of forward strands to be generated in one region of the substrate and a cluster of reverse strands to be generated in another region of the substrate) of forward polynucleotide strands (paragraph [00382]: e.g., template polynucleotide strands, including an un-cleavable first template strand 40 and a cleavable second template strand 42, may be formed in the region 14 using, respectively, the primers 18 or 18′ and 20, 20′) in the first well region (14 @ figures 7E-7F) and to attach an adjacent reverse strand cluster (44 @ figures 7E-7F and paragraph [0139]: e.g., the un-cleavable first template strands 40 are forward strands, the un-cleavable second template strands 44 are reverse strands, and when the un-cleavable first template strands 40 are reverse strands, the un-cleavable second template strands 44 are forward strands) of reverse polynucleotide strands (paragraph [0383]) in the second well region (16 @ figures 7E-7F).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filling date of claimed invention to combine image sensor structure of Cai with limitation above as taught by Fisher for the purpose of improving the efficiency of the photoresist stripping or lift off process.
Regarding claim 2; Cai discloses an array of light detectors (42 @ figure 1); an array of light guides (50 @ figure 1), each light guide (50 @ figure 1 and paragraph [0040]: e.g., each nanowell 26 is associated with a light guide 50 of the array of light guides) associated with a light detector of the array of light detectors (42 @ figure 1); and the array of nanowells (26 @ figure 1) disposed over the array of light guides (50 @ figure 1), each nanowell of the array of nanowells (26 @ figure 1) associated with a first light guide of the array of light guides (50 @ figure 1), each first light guide (paragraph [0040]) associated with a first light detector of the array of light detectors (42 @ figure 1).
Regarding claim 3; Cai discloses each nanowell of the array of nanowells (26 @ figure 1) associated with a second light guide of the array of light guides (50 @ figure 1), each second light guide associated with a second light detector (figure 1) of the array of light detectors (42 @ figure 1); the first well region (26 @ figure 1) disposed over the first light guide (figure 1) of the array of light guides (50 @ figure 1) and the second well region (26 @ figure 1) disposed over the second light guide (figure 1) of the array of light guides (50 @ figure 1).
Regarding claim 4; Cai discloses all of feature of claimed invention except for an area of the first well region is smaller than an area of the second well region. However, Fisher teaches that it is known in the art to provide an area of the first well region (14 @ figure 6B) is smaller than an area of the second well region (16 @ figure 6B). It would have been obvious to one having ordinary skill in the art before the effective filling date of claimed invention to combine image sensor structure of Cai with limitation above as taught by Fisher for the purpose of improving the efficiency of the photoresist stripping or lift off process.
Regarding claim 12; Cai discloses a device stack (46 @ figure 1) disposed over the array of light detectors (42, 40 @ figure 1); and wherein the array of light guides (50 @ figure 1) is disposed in the device stack (46 @ figure 1).
Allowable Subject Matter
Claims 5-11 are 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.
The prior art of record, taken alone or in combination, fails discloses or render obvious an image sensor structure comprising all the specific elements with the specific combination including the first well region comprising: a first section that is disposed over the entire first light guide, the first section having a first section width, and a second section extending from the first section to the region interface, the second section having a second section width that is less than the first section width; and the second well region comprising: a third section that is disposed over the entire second light guide, the third section having a third section width, and a fourth section extending from the third section to the region interface, the fourth section having a fourth section width that is less than the third section width, wherein the second section width of the first well region and the fourth section width of the second well region are substantially equal in set forth of claim 5.
The prior art of record, taken alone or in combination, fails discloses or render obvious an image sensor structure comprising all the specific elements with the specific combination including an opaque layer disposed between the array of light guides and the first and second well regions of each nanowell; the opaque layer extending under the entire region interface of the first and second well regions; and the opaque layer covering less than an entire portion of top surfaces the first and second light guides associated with each nanowell in set forth of claim 7.
The prior art of record, taken alone or in combination, fails discloses or render obvious an image sensor structure comprising all the specific elements with the specific combination including comprising: the first light guide associated with a first light detector of the array of light detectors; the second light guide associated with a second light detector of the array of light detectors; each nanowell associated with the first and second light guides having a width that is less than the pitch between the first and second light detectors; and the first and second light guides extending from their associated nanowell to their associated first and second light detectors at an acute angle relative to each other in set forth of claim 8.
The prior art of record, taken alone or in combination, fails discloses or render obvious an image sensor structure comprising all the specific elements with the specific combination including comprising: the first well region of each nanowell disposed over a first portion of the associated first light guide; the second well region of each nanowell disposed over a second portion of the associated first light guide; an array of first waveguides disposed over the array of light guides, each first waveguide associated with a nanowell of the array of nanowells, each first waveguide operable to illuminate excitation light on a forward strand cluster of forward polynucleotide strands attached in the first well-region of the first waveguide's associated nanowell; and an array of second waveguides disposed over the array of light guides, each second waveguide associated with a nanowell of the array of nanowells, each second waveguide operable to illuminate excitation light on a reverse strand cluster of reverse polynucleotide strands attached in the second well-region of the second waveguide's associated nanowell in set forth of claim 9.
The following is a statement of reasons for the indication of allowable subject matter:
Claims 13-20 would be allowable if amended or file Terminal Disclaimer to overcome the rejection(s) Double Patenting, set forth in this Office action.
Claims 13-20 are allowed.
The prior art of record, taken alone or in combination, fails discloses or render obvious a method comprising all the specific elements with the specific combination including amplifying from the forward strand cluster of the first well region into a second well region to form a plurality of forward and reverse strands in the second well region; cleaving the forward strands from the second well region to form a reverse strand cluster in the second well region; and sequencing substantially simultaneously the forward strand cluster in the first well region and the reverse strand cluster in the second well region in set forth of claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
1) Bignell et al (US 2012/0015823) discloses methods for indexing samples during the sequencing of polynucleotide templates, resulting in the attachment of tags specific to the source of each nucleic acid sample such that after a sequencing run, both the source and sequence of each polynucleotide can be determined.
2) Phillips et al (US 2002/0115082) discloses a sample suspected of containing the target polynucleotide is contacted with first and second primers to amplify the target polynucleotide; the first primer comprises a tag sequence, the complement of which is formed on the opposite strand during amplification and is referred to as a capture sequence.
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/SN/
June 9, 2026
/SANG H NGUYEN/ Primary Examiner, Art Unit 2877
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