DETAILED ACTION
Applicant’s amendment to the claims filed January 22, 2026 were received. Claims 7, 9, and 11-19 were cancelled.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office 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 .
Drawings
The previous objection to the drawings is withdrawn since claim 9 was cancelled.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Claim limitation “input device” in claim 1 has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder “device” coupled with functional language “input” without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier. The term “device” is merely a generic placeholder for the term “means.”
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim 1 has/have been interpreted to cover any art-recognized structure that achieves the claimed function, such as (non-limiting), a touchscreen, keyboard, etc., (Spec., para [0080]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 10 is objected to because the first line should read as “The system of claim 6”.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 4-6, 8, and 10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 recites “receive, from an input device in communication with the processor, a selection of a well of the plurality of wells of the well plate”, “identify a first electrode of the plurality of electrodes positioned within the well of the plurality of wells in fluid communication with a microfluidic channel and a second electrode positioned within a second well of the plurality of wells in fluid communication with the microfluidic channel, the well in fluid communication with the second well via the microfluidic channel,” “determine a voltage measurement of a fluid sample in the selected microfluidic channel well using the voltage sensor”, and “store the voltage measurement in a memory.” The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed via a computer (MPEP 2106.04(a)(2). The limitations stated above, as drafted, are processes that, under their broadest reasonable interpretation, cover performance of the limitations in the mind.
For example, the limitation of receiving a selection of a well, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic components. That is, other than reciting “the input device” and “the processor”, nothing in the claim precludes the step from practically being performed in the mind. For example, the context of this claim encompasses the user reading and/or collecting information.
Similarly, the limitation of identifying a first electrode and a second electrode, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic components. That is, other than reciting “the plurality of wells in fluid communication with a microfluidic channel”, nothing in the claim precludes the step from practically being performed in the mind. For example, the context of this claim encompasses the user observing and/or recognizing the location of the electrode.
Similarly, the limitation of determining a voltage measurement, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of a generic component (i.e., the voltage sensor). Since the step is an evaluation and/or calculation that can be done mentally based on a mathematical formula, this is an abstract idea.
Further, this judicial exception is not integrated into a practical application. Claim 1 recites receiving, identifying, determining, and storing steps. The courts have indicated that gathering and analyzing information using conventional techniques and displaying the result is not sufficient to show an improvement to technology. MPEP 2106.05(a)(II) (discussing TLI Communications LLC v. AV Auto., LLC, 823 F.3d 607, 612-13 (Fed. Cir. 2016)). Hence, claim 1 is not patent eligible based on the above reasoning and rationale.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the other elements of the claims other than the abstract idea and determine are not beyond what is well understood, routine and conventional within the prior art, including “a well plate”, “microfluidic channels”, “establishing a connection from a voltage sensor”, “electrical routing board”, “electrodes”, and “a processor”. Thus, claim 1 is not deemed patent eligible.
Claims 2, 4-6, 8, and 10 are rejected as being dependent on independent claim 1.
Claim Rejections - 35 USC § 112
The previous rejection under 35 USC 112(b) on claim 9 is withdrawn since the claim was cancelled.
Claims 1, 2, 4-6, 8, and 10 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 1 recites “the selected microfluidic channel well” in line 18. There is lack of antecedent basis for this limitation since claim 1 previously recites “receive, from an input device in communication with the processor, a selection of a well of the plurality of wells of the well plate”. The limitation will be interpreted as “the selected well
Claims 2, 4-6, 8, and 10 are rejected as being dependent on independent claim 1.
Claim 10 recites “the one or more plurality of connectors” in lines 1-2. There is lack of antecedent basis for this limitation since claim 10 depends on claim 6, and claim 6 previously recites plural connectors. The limitation will be interpreted as “of the plurality of connectors” for consistency and clarity.
Claim Rejections - 35 USC § 103
Claims 1, 2, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Dominguez (US 20190136224) in view of Kirk (US 20030022153).
Regarding claims 1, 2, and 5, Dominguez teaches system, comprising:
a well plate (210) having a plurality of wells (para 0105-0106, 0110; see e.g., Figs. 1, 2, and 8);
an electrical routing board (implicit of a voltage source 1440) coupled, via a handling system (para 0106), to the well plate (210) (para 0120; see e.g., Figs. 2 and 14);
electrodes (106 (1022)) coupled to the voltage source 1440 (electrical routing board), the voltage source 1440 (electrical routing board) positioned such that each electrode (106) is disposed within a respective (para 0105, 0115; see e.g., Figs. 1 and 10).
a controller 1460 (processor) programmed to:
receive a selection of wells of the well plate (210) from an input device (para 0119-0125; e.g., para 0120 discloses “manual entry”);
identify first and second electrodes (106, 1022)) positioned within the well and a second well of the well plate (para 0119-0125);
establish a connection from a voltage sensor to the first electrode and the second electrode (para 0119-0125);
determine a voltage measurement of a fluid sample in the selected well using the voltage sensor (para 0119-0125; e.g., para 0120 discloses applying a predetermined voltage); and
store the voltage measurement in a memory (para 0119-0125; e.g., discloses look-up table and preset voltage).
Dominguez does not explicitly teach that each well of well plate (210) is coupled to a respective opening of one of a plurality of microfluidic channels, each well in fluid communication with a second well via a microfluidic channel.
However, Kirk teaches each well (13) of a well plate is coupled to a respective opening of one of a plurality of microfluidic channels (15), each well (13) in fluid communication with a second well (14) via a microfluidic channel (15), for the benefit of providing different concentration gradients of test substances (para 0045; see e.g., Figs. 1A,B). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify the well plate (210) in Dominguez such that each well is in fluid communication with a second well via a microfluidic channel, as taught by Kirk, for the benefit of providing different concentration gradients of test substances.
Regarding claim 2, Dominguez further teaches the controller 1460 (processor) is programmed to actuate one or more pumps to provide or remove fluid from a respective well (para 0109).
The term “pump” has been interpreted in light of the specification to cover the pathway for delivering or removing fluid (Spec., para 0050). Thus, the limitation “pumps respectively comprising the plurality of electrodes” is considered met by Dominguez since the pipette tip (e.g., tip 100 (800)(1000)) is part of the pump.
Regarding claim 5, Dominguez further teaches the well plate comprises up to 96 wells arranged in a rectangular pattern (para 0106; see e.g., Fig. 2).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Dominguez (US 20190136224) in view of Kirk (US 20030022153) as applied to claim 1 above, and in further view of Altland (USP 4847602).
Regarding claim 4, Dominguez does not explicitly teach controller 1460 (processor) is enclosed in an enclosure.
However, Altland teaches an airtight enclosure (27) enclosing a computer 25 (processor); and a source of dry gas passing through the airtight enclosure, for the benefit of preventing permeation of liquid and dusts (col. 4, lines 20-33; see e.g., Fig. 1; for motivation see col. 7, lines 47-55). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to enclose controller 1460 (processor) in Dominguez in an airtight enclosure, as taught by Altland, for the benefit of preventing permeation of liquid and dusts.
Claims 6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Dominguez (US 20190136224) in view of Kirk (US 20030022153) as applied to claim 1 above, and in further view of Tarrall (USP 4029381).
Regarding claims 6 and 10, Dominguez does not explicitly teach connectors configured to couple to the electrical routing board (implicit of a voltage source 1440) through mechanical force, wherein the connector comprises an opening configured to receive a respective electrode; and cantilevers arranged around the opening and configured to electrically couple the respective electrode to another connector.
However, Tarrall teaches a male/female connector configured to couple to an electrical routing board through mechanical force, wherein the connector comprises an opening (42) configured to receive a respective electrode; and prongs 16, 17 (cantilevers) arranged around the opening (42) and configured to electrically couple respective electrodes (30, 31) to another connector (col. 2, lines 19-47; see e.g., Figs. 1-2), for the benefit of mechanically securing an electrical connection (col. 3, lines 46-65). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to couple the electrodes to the electrical routing board (implicit of a voltage source 1440) in Dominguez with the claimed connector, as taught by Tarall, for the benefit of mechanically securing an electrical connection.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Dominguez (US 20190136224) in view of Kirk (US 20030022153) as applied to claim 1 above, and in further view of Ryttsen (US 20050048651).
Regarding claim 8, Dominguez further teaches that the electrodes (106 (1022)) are composed of electrically conductive material (para 0114).
Dominguez does not explicitly teach the electrodes (106 (1022)) comprise silver.
However, Ryttsen teaches electrodes composed of silver for the benefit of imparting suitable electrical and mechanical properties (para 0143). The selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960) (see MPEP § 2144.07). Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to compose the electrodes (106 (1022)) in Dominguez of silver, as taught by Ryttsen, for the benefit of imparting suitable electrical and mechanical properties.
Conclusion
Ryttsen (US 20050048651) further teaches a voltage source or current generator (para 0150).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES CAPOZZI whose telephone number is (571)270-3638. The examiner can normally be reached Monday - Friday, 9:00 am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Mallari can be reached at (571) 272-4729. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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