`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`13/613,325
`
`09/13/2012
`
`Masaya Tamura
`
`MAT—10577US
`
`2529
`
`EXAMINER
`RATNERPRESTIA —
`“W” —
`7590
`52473
`PO. BOX 980
`NGUYEN, SANG H
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`28 86
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`11/07/2013
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/613,325 TAMURA ET AL.
`
`Examiner
`Art Unit
`AIA (First Inventor to File)
`Office Action Summary
`
`SANG NGUYEN its“ 2886
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1 .704(b).
`
`Status
`
`1)IZI Responsive to communication(s) filed on 10/02/13.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|ZI This action is non-final.
`2a)|:l This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s) M is/are withdrawn from consideration.
`
`is/are allowed.
`6)I:I Claim(s)
`7)|Z| Claim(s) 1-12 and 14-35is/are rejected.
`8)IZI Claim(s)_13 is/are objected to.
`
`
`are subject to restriction and/or election requirement.
`9)I:I Claim((s)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`
`
`I/'/\WIIW.USOI.O. ovI’ atentS/init events/
`hI/index.‘s orsend an inquiryto PPI-iieedback{®usgtc.00v.
`
`hit
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l The drawing(s) filed on
`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)IXI Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)IZl All
`
`b)|:l Some * c)I:l None of the:
`
`1.IXI Certified copies of the priority documents have been received.
`2.|:l Certified copies of the priority documents have been received in Application No.
`3.|:| Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`3) D Interview Summary (PTO-413)
`
`Paper N°ISI/Ma" Date' —
`PTO/SB/08
`t
`t
`St
`I
`D'
`I'
`f
`2 IZI I
`)
`4) I:I Other:
`a emen (s) (
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date 09/13/12.
`US. Patent and Trademark Office
`PTOL—326 (Rev. 08-13)
`
`Part of Paper No./Mai| Date 20131029
`
`Office Action Summary
`
`

`

`Application/Control Number: 13/613,325
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`Page 2
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`Art Unit: 2886
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`DETAILED ACTION
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`Election/Restrictions
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`Applicant’s election without traverse of Group | (claims 1-35) in the reply filed on
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`10/02/13 is acknowledged.
`
`Applicant should cancel non-elected claims 36-38.
`
`Priority
`
`Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C.
`
`119(a)-(d), which papers have been placed of record in the file.
`
`Information Disclosure Statement
`
`The information disclosure statement (IDS) submitted on 09/13/12 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
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`patenting rejection is appropriate where the claims at issue are not identical, but at least
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`

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`Application/Control Number: 13/613,325
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`Page 3
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`Art Unit: 2886
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`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); and 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 a nonstatutory
`
`double patenting ground provided the reference application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`The USPTO internet Web site contains terminal disclaimer forms which may be
`
`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form 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
`
`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`Claims 1-35 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 1-34 of copending Application No.
`
`

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`Application/Control Number: 13/613,325
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`Page 4
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`Art Unit: 2886
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`13/260,444. Although the claims at issue are not identical, they are not patentably
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`distinct from each other because all of feature of claims 1-34 of copending Application
`
`No. 13/260,444 anticipated all of limitation of claims 1-35 of the Present Invention.
`
`This is a provisional nonstatutory double patenting rejection because the
`
`patentably indistinct claims have not in fact been patented.
`
`Claim Rejections - 35 USC § 102
`
`In the event the determination of the status of the application as subject to NA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AlA 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.
`
`The following is a quotation of the appropriate paragraphs of pre-AlA 35 U.S.C.
`
`102 that form the basis for the rejections under this section made in this Office action:
`
`A person shall be entitled to a patent unless —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`Claims 1, 8-9, 24-27 and 35 rejected under pre-AIA 35 U.S.C. 102 (b) as
`
`being anticipated by Song (U.S. Patent No. 7,920,268 or Pub. No. US 2010/0097611
`
`A1).
`
`Regarding claims 1 and 27; Song discloses a plasmon sensor (i.e., sensor
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`section [100 of figure 5]) comprising:
`
`

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`Application/Control Number: 13/613,325
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`Page 5
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`Art Unit: 2886
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`a first metal layer (i.e., metal strip [115 of figure 5]) having a lower surface and an
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`upper surface which is configured to receive an electromagnetic wave (figure 1) from a
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`light source (200 of figure 1);
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`a second metal layer (i.e., thin film metal [113 of figure5]) having an upper
`
`surface facing the lower surface of the first metal layer (115 of figure 5); and
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`a spacer (i.e., dielectric layer [114 of figure 5]) for maintaining a distance
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`between the first metal layer (115 of figure 5) and the second metal layer (113 of figure
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`5) constantly,
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`wherein a hollow space (i.e., channel [117 of figure 5]) is provided between the
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`first metal layer (115 of figure 5) and the second metal layer (113 of figure 5), and is
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`configured to be filled with a test sample containing a medium (i.e., specimen sample
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`[col.9 lines 7-24). See figures 1-12.
`
`Regarding claim 8; Song discloses electromagnetic field intensity of the light
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`source section (200 of figure 1) is distributed between the first metal layer (115 of figure
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`5) and the second metal layer (113 of figure 5) in a high-order mode at a frequency for
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`generating surface plasmon resonance (col.2 line 55 to col.3 line 3).
`
`Regarding claim 9; Song discloses a state of the medium inside the hollow
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`space (i.e., channels [117 of figure 5]) is changed with time (col.8 lines 19-25).
`
`Regarding claim 24; Song discloses further comprising: a first supporter (116 of
`
`figure 5) for retaining the first metal layer (115 of figure 5); and a second supporter (112
`
`of figure 5) for retaining the second metal layer (113 of figure 5), wherein one of the first
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`

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`Application/Control Number: 13/613,325
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`Page 6
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`Art Unit: 2886
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`supporter (116 of figure 5) and the second supporter (112 of figure 5) constitutes a
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`sensor holding portion (figure 5).
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`Regarding claims 25 and 35; Song discloses the hollow space (117 of figure 5)
`
`is filled with a compressed gas as the test sample (i.e., specimen).
`
`Regarding claim 26; Song discloses further comprising: a first supporter (116 of
`
`figure 5) provided above the first metal layer (115 of figure 5), and a second supporter
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`(112 of figure 5) provided under the second metal layer (113 of figure 5), wherein one
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`end of at least one of the first supporter (116 of figure 9) and the second supporter has
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`a tapered portion (figure 9).
`
`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 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 pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
`
`

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`Application/Control Number: 13/613,325
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`Page 7
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`Art Unit: 2886
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`The text of those sections of Title 35, U.S. Code not included in this action can
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`be found in a prior Office action.
`
`The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148
`
`USPQ 459 (1966), that are applied for establishing a background for determining
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`obviousness under pre-AIA 35 U.S.C. 103(a) 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.
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`4. Considering objective evidence present in the application indicating
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`obviousness or nonobviousness.
`
`This application currently names joint inventors. In considering patentability of the
`
`claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter
`
`of the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
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`consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C.
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`102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
`
`Claims 2-7, 10-12, 14-23, and 28-34 are rejected under pre-AIA 35 U.S.C.
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`103(a) as being unpatentable over Song (U.S. Patent No. 7,920,268 or Pub. No. US
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`2010/0097611 A1) in view of Nishikawa et al (Pub. No. US 2008/0218761).
`
`

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`Application/Control Number: 13/613,325
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`Page 8
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`Art Unit: 2886
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`Regarding claims 2 and 28; Song discloses all of feature of claimed invention
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`except for a plurality of acceptors disposed on at least one of a first adjacent region
`
`around the lower surface of the first metal layer and a second adjacent region around
`
`the upper surface of the second metal layer. However, Nishikawa et al teaches that it is
`
`known in the art to provide a plurality of acceptors (14, 16 of figure 1 or 71, 72, 73, 74,
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`75 of figures 44-50) disposed on at least one of a first adjacent region around the lower
`
`surface of the first metal layer and a second adjacent region around the upper surface
`
`of the second metal layer (52 of figure 44B). It would have been obvious to one having
`
`ordinary skill in the art at the time the invention was made to combine method and
`
`plasmon sensor of Song with limitation above as taught by Nishikawa et al for the
`
`purpose of measuring the presence and quantity of the specific biological molecules
`
`with high accuracy.
`
`Regarding claim 3; Song discloses all of feature of claimed invention except for
`
`the hollow space is configured to have a mixed fluid containing the test sample and the
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`plurality of acceptors injected therein. However, Nishikawa et al teaches that it is known
`
`in the art to provide the hollow space (45 of figure 10B) is configured to have a mixed
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`fluid containing the test sample (15 of figures 1A-1 B) and the plurality of acceptors (14,
`
`16 of figures 1A-1 B) injected therein. It would have been obvious to one having ordinary
`
`skill in the art at the time the invention was made to combine method and plasmon
`
`sensor of Song with limitation above as taught by Nishikawa et al for the purpose of
`
`measuring the presence and quantity of the specific biological molecules with high
`
`accuracy.
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`

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`Application/Control Number: 13/613,325
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`Page 9
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`Art Unit: 2886
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`Regarding claim 4; Song discloses all of feature of claimed invention except for
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`the plurality of acceptors are arranged in a matrix form at regular pitches in at least one
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`of the first adjacent region and the second adjacent region, and wherein the pitches is
`
`larger than a wavelength of then electromagnetic wave and smaller than 200 um.
`
`However, Nishikawa et al teaches that it is known in the art to provide the plurality of
`
`acceptors (73, 74, 75, 78 of figure 50) are arranged in a matrix form at regular pitches in
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`at least one of the first adjacent region (57 of figure 4GB) and the second adjacent
`
`region (57 of figure 408). It would have been obvious to one having ordinary skill in the
`
`art at the time the invention was made to combine method and plasmon sensor of Song
`
`with limitation above as taught by Nishikawa et al for the purpose of measuring the
`
`presence and quantity of the specific biological molecules with high accuracy.
`
`Song and Nishikawa et al disclose all of feature of claimed invention except for
`
`the pitches is larger than a wavelength of then electromagnetic wave and smaller than
`
`200 pm. It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to combine method and plasmon sensor of Song with limitation
`
`above, since it has been held that where the general conditions of a claim are disclosed
`
`in the prior art, discovering the optimum or working ranges involves only routine skill in
`
`the art. In re Aller, 105 USPQ 233.
`
`Regarding claim 5; Song and Nishikawa et al disclose all of feature of claimed
`
`invention except for the plurality of acceptors comprise porphyrin rings of different kinds,
`
`porphyrin of different coordination metals, or porphyrin of different functional groups. It
`
`would have been obvious to one having ordinary skill in the art at the time the invention
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`

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`Application/Control Number: 13/613,325
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`Page 10
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`Art Unit: 2886
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`was made to combine method and plasmon sensor of Song with limitation above, since
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`it has been held to be within the general skill of a worker in the art to select a known
`
`material on the basis of its suitability for the intended use as a matter of obvious design
`
`choice. In re Leshin, 125 USPQ 416.
`
`Regarding claims 6 and 30; Song discloses all of feature of claimed invention
`
`except for the acceptors comprise receptor protein aptamer, porphyrin, or high molecule
`
`produced by a molecular imprinting technique. However, Nishikawa et al teaches that it
`
`is known in the art to provide the acceptors (73, 74, 75, 78 of figure 50) comprise
`
`receptor protein (para. [0011]), aptamer, porphyrin, or high molecule produced by a
`
`molecular imprinting technique. It would have been obvious to one having ordinary skill
`
`in the art at the time the invention was made to combine method and plasmon sensor of
`
`Song with limitation above as taught by Nishikawa et al for the purpose of measuring
`
`the presence and quantity of the specific biological molecules with high accuracy.
`
`Regarding claim 7; Song discloses all of feature of claimed invention except for
`
`the second metal layer has a through-hole formed therein. However, Nishikawa et al
`
`teaches that it is known in the art to provide the second metal layer (i.e., cover [54 of
`
`figure 1OA-1OB) has a through-hole (55, 56 of figures 1OA-1OB) formed therein. It would
`
`have been obvious to one having ordinary skill in the art at the time the invention was
`
`made to combine method and plasmon sensor of Song with limitation above as taught
`
`by Nishikawa et al for the purpose of measuring the presence and quantity of the
`
`specific biological molecules with high accuracy.
`
`

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`Application/Control Number: 13/613,325
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`Page 11
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`Art Unit: 2886
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`Regarding claim 10; Song and Nishikawa et al disclose all of feature of claimed
`
`invention except for a wavelength for generating a surface plasmon resonance changes
`
`from an invisible light range to a visible light range or from the visible light range to the
`
`invisible light range by changing the state of the medium inside the hollow space with
`
`time. It would have been obvious to one having ordinary skill in the art at the time the
`
`invention was made to combine method and plasmon sensor of Song with limitation
`
`above, since it has been held that where the general conditions of a claim are disclosed
`
`in the prior art, discovering the optimum or working ranges involves only routine skill in
`
`the art. In re Aller, 105 USPQ 233.
`
`Regarding claim 11; Song and Nishikawa et al disclose all of feature of claimed
`
`invention except for a wavelength for generating surface plasmon resonance changes
`
`from an invisible light range to one of a range between 450nm and 570nm and a range
`
`between 620nm and 750nm, or changes from one of a range between 450nm and
`
`570nm and a range between 620nm and 750nm to the invisible light range by changing
`
`the state of the medium inside the hollow space with time. It would have been obvious
`
`to one having ordinary skill in the art at the time the invention was made to combine
`
`method and plasmon sensor of Song with limitation above, since it has been held that
`
`where the general conditions of a claim are disclosed in the prior art, discovering the
`
`optimum or working ranges involves only routine skill in the art. In re Aller, 105 USPQ
`
`233.
`
`Regarding claim 12; Song and Nishikawa et al disclose all of feature of claimed
`
`invention except for a wavelength for generating surface plasmon resonance changes
`
`

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`Application/Control Number: 13/613,325
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`Page 12
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`Art Unit: 2886
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`from a range between 450nm and 495nm to a range between 495nm and 580nm by
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`changing the state of the medium inside the hollow space with time. It would have been
`
`obvious to one having ordinary skill in the art at the time the invention was made to
`
`combine method and plasmon sensor of Song with limitation above, since it has been
`
`held that where the general conditions of a claim are disclosed in the prior art,
`
`discovering the optimum or working ranges involves only routine skill in the art. In re
`
`Aller, 105 USPQ 233.
`
`Regarding claim 14; Song and Nishikawa et al disclose all of feature of claimed
`
`invention except for a wavelength for generating surface plasmon resonance changes
`
`within a predetermined wavelength range when a state of the hollow space changes
`
`from not being filled with a test sample containing no analyte to being filled with the test
`
`sample containing no analyte, and wherein the predetermined wavelength range is one
`
`of a wavelength range which is not shorter than 380nm and is shorter than 450nm, a
`
`wavelength range which is not shorter than 450nm and is shorter than 495nm, a
`
`wavelength range which is not shorter than 495nm and is shorter than 570nm, a
`
`wavelength range which is not shorter than 570nm and is shorter than 590nm, a
`
`wavelength range which is not shorter than 590nm and is shorter than 620nm, and a
`
`wavelength range which is not shorter than 620nm and is shorter than 750nm. It would
`
`have been obvious to one having ordinary skill in the art at the time the invention was
`
`made to combine method and plasmon sensor of Song with limitation above, since it
`
`has been held that where the general conditions of a claim are disclosed in the prior art,
`
`

`

`Application/Control Number: 13/613,325
`
`Page 13
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`Art Unit: 2886
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`discovering the optimum or working ranges involves only routine skill in the art. In re
`
`Aller, 105 USPQ 233.
`
`Regarding claim 15-17; Song and Nishikawa et al disclose all of feature of
`
`claimed invention except for when a state of the medium inside the hollow space is
`
`changed with time, a wavelength for generating surface plasmon resonance changes
`
`from one of a wavelength range which is not shorter than 380nm and is shorter than
`
`450nm, a wavelength range which is not shorter than 450nm and is shorter than 495nm,
`
`a wavelength range which is not shorter than 495nm and is shorter than 570nm, a
`
`wavelength range which is not shorter than 570nm and is shorter than 590nm, a
`
`wavelength range which is not shorter than 590nm and is shorter than 620nm, and a
`
`wavelength range which is not shorter than 620nm and is shorter than 750nm to
`
`another wavelength range of the wavelength range which is not shorter than 380nm and
`
`is shorter than 450nm, the wavelength range which is not shorter than 450nm and is
`
`shorter than 495nm, the wavelength range which is not shorter than 495nm and is
`
`shorter than 570nm, the wavelength range which is not shorter than 570nm and is
`
`shorter than 590nm, the wavelength range which is not shorter than 590nm and is
`
`shorter than 620nm, and the wavelength range which is not shorter than 620nm and is
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`shorter than 750nm. It would have been obvious to one having ordinary skill in the art at
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`the time the invention was made to combine method and plasmon sensor of Song with
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`limitation above, since it has been held that where the general conditions of a claim are
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`disclosed in the prior art, discovering the optimum or working ranges involves only
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`routine skill in the art. In re Aller, 105 USPQ 233.
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`

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`Application/Control Number: 13/613,325
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`Page 14
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`Art Unit: 2886
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`Regarding claim 18; Song discloses all of feature of claimed invention except
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`for a sample injection port for injecting the test sample containing analyte into the hollow
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`space. However, Nishikawa et al teaches that it is known in the art to provide a sample
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`injection port (43 of figure 9) for injecting the test sample (15 of figure 1) containing
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`analyte into the hollow space (45 of figure 108). It would have been obvious to one
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`having ordinary skill in the art at the time the invention was made to combine method
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`and plasmon sensor of Song with limitation above as taught by Nishikawa et al for the
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`purpose of measuring the presence and quantity of the specific biological molecules
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`with high accuracy.
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`Regarding claims 19 and 33; Song and Nishikawa et al disclose all of feature of
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`claimed invention except for the first metal layer has a thickness smaller than a
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`thickness of the second metal layer. It would have been obvious to one having ordinary
`
`skill in the art at the time the invention was made to combine method and plasmon
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`sensor of Song with limitation above, since it has been held that where the general
`
`conditions of a claim are disclosed in the prior art, discovering the optimum or working
`
`ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
`
`Regarding claim 20; Song and Nishikawa et al disclose all of feature of claimed
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`invention except for the spacer forming the hollow space in at least a part of space
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`between the first metal layer and the second metal layer, and wherein a part or all of the
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`spacer is made of material identical to material of at least one of the first metal layer and
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`the second metal layer. It would have been obvious to one having ordinary skill in the
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`art at the time the invention was made to combine method and plasmon sensor of Song
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`

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`Application/Control Number: 13/613,325
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`Page 15
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`Art Unit: 2886
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`with limitation above, since it has been held to be within the general skill of a worker in
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`the art to select a known material on the basis of its suitability for the intended use as a
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`matter of obvious design choice. In re Leshin, 125 USPQ 416.
`
`Regarding claim 21; Song and Nishikawa et al disclose all of feature of claimed
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`invention except for the spacer includes a first layer and a second layer, wherein the
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`first layer is made of material identical to material of at least one of the first metal layer
`
`and the second metal layer. It would have been obvious to one having ordinary skill in
`
`the art at the time the invention was made to combine method and plasmon sensor of
`
`Song with limitation above, since it has been held to be within the general skill of a
`
`worker in the art to select a known material on the basis of its suitability for the intended
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`use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
`
`Regarding claim 22; Song discloses the spacer (114 of figure 4) is fixed with an
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`end portion of the spacer (114 of figure 5) inserted in at least one of the first metal layer
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`(115 of figure 5) and the second metal layer (113 of figure 5).
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`Regarding claims 23 and 34; Song discloses all of feature of claimed invention
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`except for the test sample is injected into the hollow space by a capillary phenomenon.
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`However, Nishikawa et al teaches that it is known in the art to provide the test sample
`
`(15 of figure 1) is injected into the hollow space (45 of figure 9) by a capillary
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`phenomenon (43 of figure 9). It would have been obvious to one having ordinary skill in
`
`the art at the time the invention was made to combine method and plasmon sensor of
`
`Song with limitation above as taught by Nishikawa et al for the purpose of measuring
`
`the presence and quantity of the specific biological molecules with high accuracy.
`
`

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`Application/Control Number: 13/613,325
`
`Page 16
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`Art Unit: 2886
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`Regarding claim 29; Song discloses all of feature of claimed invention except
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`for the first adjacent region includes: a first area having the plurality of acceptors; and a
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`second area not having the plurality of acceptors, and wherein the second adjacent
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`region includes: a third area facing the first area and having the plurality of acceptors;
`
`and a fourth area facing the second area and not having the plurality of acceptors.
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`However, It would have been obvious to one having ordinary skill in the art at the time
`
`the invention was made to combine method and plasmon sensor of Song with limitation
`
`above, since it has been held to be within the general skill of a worker in the art to select
`
`a known material on the basis of its suitability for the intended use as a matter of
`
`obvious design choice. In re Leshin, 125 USPQ 416.
`
`Regarding claims 31-32; Song discloses all of feature of claimed invention
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`except for a distance of the second metal layer from the first metal layer can be
`
`changed. However, it would have been obvious to one having ordinary skill in the art at
`
`the time the invention was made to combine method and plasmon sensor of Song with
`
`limitation above, since it has been held that broadly providing a mechanical or automatic
`
`means to replace manual activity which has accomplished the same result involves only
`
`routine skill in the art. In re Venner, 120 USPQ 192.
`
`Allowable Subject Matter
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`Claim 13 is objected to as being dependent upon a rejected base claim, but
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`would be allowable if rewritten in independent form including all of the limitations
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`of the base claim and any intervening claims.
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`

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`Application/Control Number: 13/613,325
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`Page 17
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`Art Unit: 2886
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`The prior art of record, taken alone or in combination, fails discloses or render
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`obvious a plasmon sensor comprising all the specific elements with the specific
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`combination including a test sample containing no analyte has refractive index n,
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`wherein the first metal layer and the second metal layer are disposed with a
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`predetermined spatial distance to produce electromagnetic field intensity distribution of
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`an m-th order mode between the first metal layer and the second metal layer before the
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`test sample containing no analyte is placed in the hollow space, and wherein the
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`plasmon sensor satisfies a relation: m = a/(n- 1), where a is an integer not smaller than
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`lin set forth of claim 13.
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
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`applicant's disclosure. Walters (20130100454); Shimotani et al (20130126361); Lee et
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`al (8298495); Ohtsuka (7682566).
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to SANG NGUYEN whose telephone number is (571 )272-
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`2425. The examiner can normally be reached on M-F.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Tarifur Chowdhury can be reached on 571 -272-2800 ext. 86. The fax phone
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`number for the organization where this application or proceeding is assigned is 571-
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`273-8300.
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`