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 .
Response to Amendment
This is an office action in response to applicant’s arguments and remarks filed on June 12, 2025. Claims 1-4, 7-8, 11-12, and 14-23 are pending in the application. Claims 2-4, 7, 11-12, and 14-22 are withdrawn, and claims 1, 8, and 23 are being examined herein.
Status of Rejections
All rejections from the previous office action are withdrawn in view of Applicant’s amendment.
New grounds of rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and 35 U.S.C. 103 are necessitated by the amendments.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites the limitation “the well sidewall is hydrophobic” in line 2 of the claim. Claim 8 depends from independent claim 1, which recites “a lower portion of the well sidewall is hydrophilic, and an upper portion of the well sidewall is hydrophobic” in lines 11-12 of the claim. It is unclear how the well sidewall can be hydrophobic in dependent claim 8 when it is required to be both hydrophilic and hydrophobic in independent claim 1.
Claim Rejections - 35 USC § 103
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, 8, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Davis et al. (US 2015/0153302 A1) in view of Keyes et al. (US 2017/0176449 A1).
Regarding claim 1, Davis teaches a nanopore cell (a biochip comprising a nanopore, Davis, Fig. 20, para. [0004], [0039], [0103]), comprising:
a substrate (a semiconductor substrate, Davis, Fig. 20, para. [0104]);
an electrode disposed on the substrate, wherein the electrode is flat (a planar silver electrode disposed on the semiconductor substrate, Davis, Fig. 20, para. [0121], [0123], [0174], [0177]);
a dielectric layer disposed above the electrode (a silicon dioxide layer treated with a silane layer disposed above the silver electrode, Davis, Fig. 20, para. [0105], [0129], [0131]-[0132]; Examiner interprets the silicon dioxide layer and the silane coating together to read on the dielectric layer);
a well formed in the dielectric layer over the electrode (a well is formed in the silicon dioxide layer over the silver electrode, Davis, Fig. 20, para. [0123]), the well having a well sidewall formed by the dielectric layer and a well bottom formed by the electrode (the well has a well sidewall formed by the silicon dioxide layer and the silane layer, and a well bottom on the exposed portion of the silver electrode, Fig. 20, para. [0123], [0129]), wherein the well bottom is hydrophilic (the surface of the silver metal electrode is hydrophilic, Davis, Fig. 20, para. [0123], [0185]), and an upper portion of the well sidewall is hydrophobic (the well sidewall is hydrophobic due to the silanization of the silicon dioxide surface, Davis, Fig. 20, para. [0016], [0129]).
Davis teaches that at least the top surface of the silicon dioxide layer must be treated with silane to become hydrophobic such that the silanized surface facilitates the forming and adhering of a hydrophobic membrane such as a lipid bilayer adjacent to the well (Davis, Fig. 20, para. [0016], [0129]). Davis fails to teach wherein a lower portion of the well sidewall is hydrophilic. However, Davis teaches that the surfaces of the flow channel other than the electrodes can be hydrophobic, hydrophilic, or any combination thereof (Davis, para. [0177], [0186]). Davis teaches that different surfaces may be treated for different characteristics (Davis, para. [0177], [0186]). Davis teaches that the well comprises a volume of electrolyte (Davis, para. [0108]).
Keyes teaches a microfluidic array supporting a lipid bilayer assembly on which membrane proteins can be assembled (Keyes, abstract). Keyes teaches a PDMS substrate 104 having cavities 103 therein that are each filled with a solution 105 (Keyes, Fig. 1A, para. [0033], [0036]). Keyes teaches that the substrate 104 is rendered hydrophilic by plasma treatment at controlled air pressure (Keyes, Fig. 1A, para. [0035]). Keyes teaches that a lipid bilayer 106 may be assembled over the array of cavities 103 (Fig. 1B, para. [0037]).
Since Davis teaches that the surfaces of the flow channel other than the electrodes can be hydrophobic, hydrophilic, or any combination thereof for different characteristics (Davis, para. [0177], [0186]), it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the lower portion of the well sidewall of Davis to be rendered hydrophilic as taught by Keyes in order to yield the predictable result of filling the well with a volume of electrolyte. MPEP § 2143(I)(D). Therefore, Modified Davis teaches wherein the lower portion of the well sidewall is rendered hydrophilic for filling the well with electrolyte, and the upper portion of the well sidewall remains hydrophobic from silanization for forming the hydrophobic membrane.
Regarding claim 8, Modified Davis teaches wherein the well bottom is hydrophilic (the surface of the silver metal electrode is hydrophilic, Davis, Fig. 20, para. [0123], [0185]) and the well sidewall is hydrophobic (the upper portion of the well sidewall is hydrophobic due to the silanization of the silicon dioxide surface, Davis, Fig. 20, para. [0016], [0129]).
Regarding claim 23, Davis teaches a nanopore cell (a biochip comprising a nanopore, Davis, Fig. 20, para. [0004], [0039], [0103]), comprising:
a substrate (a semiconductor substrate, Davis, Fig. 20, para. [0104]);
an electrode disposed on the substrate, and wherein the electrode is flat (a planar silver electrode disposed on the semiconductor substrate, Davis, Fig. 20, para. [0121], [0123], [0174], [0177]);
a dielectric layer disposed above the electrode (a silicon dioxide layer treated with a silane layer disposed above the silver electrode, Davis, Fig. 20, para. [0105], [0129], [0131]-[0132]; Examiner interprets the silicon dioxide layer and the silane coating together to read on the dielectric layer); and
a well formed in the dielectric layer over the electrode (a well is formed in the silicon dioxide layer over the silver electrode, Davis, Fig. 20, para. [0123]), the well having a well sidewall formed by the dielectric layer and a well bottom formed by the electrode (the well has a well sidewall formed by the silicon dioxide layer and the silane layer, and a well bottom on the exposed portion of the silver electrode, Fig. 20, para. [0123], [0129]), wherein the well bottom is hydrophilic (the surface of the silver metal electrode is hydrophilic, Davis, Fig. 20, para. [0123], [0185]), and a top surface of the dielectric layer is hydrophobic (the top surface of the silicon dioxide layer is hydrophobic due to the silanization of the silicon dioxide surface, Davis, Fig. 20, para. [0016], [0129]).
Davis teaches that at least the top surface of the silicon dioxide layer must be treated with silane to become hydrophobic such that the silanized surface facilitates the forming and adhering of a hydrophobic membrane such as a lipid bilayer adjacent to the well (Davis, Fig. 20, para. [0016], [0129]). Davis fails to teach wherein the well sidewall is hydrophilic. However, Davis teaches that the surfaces of the flow channel other than the electrodes can be hydrophobic, hydrophilic, or any combination thereof (Davis, para. [0177], [0186]). Davis teaches that different surfaces may be treated for different characteristics (Davis, para. [0177], [0186]). Davis teaches that the well comprises a volume of electrolyte (Davis, para. [0108]).
Keyes teaches a microfluidic array supporting a lipid bilayer assembly on which membrane proteins can be assembled (Keyes, abstract). Keyes teaches a PDMS substrate 104 having cavities 103 therein that are each filled with a solution 105 (Keyes, Fig. 1A, para. [0033], [0036]). Keyes teaches that the substrate 104 is rendered hydrophilic by plasma treatment at controlled air pressure (Keyes, Fig. 1A, para. [0035]). Keyes teaches that a lipid bilayer 106 may be assembled over the array of cavities 103 (Fig. 1B, para. [0037]).
Since Davis teaches that the surfaces of the flow channel other than the electrodes can be hydrophobic, hydrophilic, or any combination thereof for different characteristics (Davis, para. [0177], [0186]), it would have been obvious for one having ordinary skill in the art before the effective filing date of the claimed invention to modify the well sidewall of Davis to be rendered hydrophilic as taught by Keyes in order to yield the predictable result of filling the well with a volume of electrolyte. MPEP § 2143(I)(D). Therefore, Modified Davis teaches wherein the well sidewall is rendered hydrophilic for filling the well with electrolyte, and the top surface of the silicon dioxide layer remains hydrophobic from silanization for forming the hydrophobic membrane.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 23 have been considered but are moot in light of new grounds of rejection. Prior art Davis in view of Keyes is now relied on for the features claims 1 and 23 as recited in the rejection supra.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VIVIAN A TRAN whose telephone number is (571)272-3232. The examiner can normally be reached Mon - Fri 9am-5pm.
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/V.T./Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794