DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/2/2025 has been entered.
Response to Amendment
The Amendment filed on 12/2/2025 has been entered. Claims 1-4 and 7-19 remain pending in the application.
Election/Restrictions
Claim 4 which is/are stated that they have been withdrawn due to a restriction requirement has only the claim number and the status indicator of the claim (Withdrawn). However, this format is not an acceptable format, only cancelled claims can be listed with a claim number and a status indicator of cancelled and withdrawn claims must still have the text of the claim (MPEP § 714 (II)(C)(A)). The applicant is requested to send a correct listing of the claims with the next submission with either claim 4 being cancelled or the text of claim 4 present with a status indicator of withdrawn.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 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.
Claim(s) 1-3 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by United States Application Publication No. 2012/0028342, hereinafter Ismagilov.
Regarding claim 1, Ismagilov teaches a method for isolating a target from a biological sample (abstract), the target being bound to a solid phase substrate to form a target-bound solid phase substrate (paragraph [0128]), comprising the steps of: providing a droplet of the biological sample including the target-bound solid phase substrate at a first region (figure 15, part 2, the combination of items A and F) of a surface of a first plate (item 14 and paragraph [0187]); depositing a droplet of a fluid on a second region (item B) of the surface of the first plate (paragraph [0187]), the second region being spaced from the first region such that the fluid is spaced from the biological sample along the surface of the first plate (figure 15); positioning a second plate (item 12) in spaced relation to the first plate (figure 15), the second plate having a hydrophobic surface directed towards the surface of the first plate (paragraphs [0336] and [0338]), the surface of the first plate and the surface of the second plate being generally parallel (figure 15); drawing the target-bound solid phase substrate toward the surface of the second plate with a magnetic force (paragraph [0275]); retaining the target-bound solid phase substrate adjacent the surface of the second plate with the magnetic force (paragraph [0275]); and with the target-bound solid phase substrate retained adjacent the surface of the second plate with the magnetic force (paragraph [0275]), moving at least one of the first plate and the second plate such that during the moving of at least one of the first plate and the second plate (paragraph [0187]): the surface of the first plate and the surface of the second plate remain generally parallel (paragraph [0187] and figure 15); the target-bound solid phase substrate is moved from a first location wherein the target-bound solid phase substrate is in the biological sample to a second location wherein the target-bound solid phase substrate communicates with the fluid at the second region of the surface of the first plate (paragraph [0187]); and the target-bound solid phase substrate exits the biological sample provided at the first region of the surface as the target-bound solid phase substrate is moved from the first location to the second location (paragraph [0187]); and releasing the target-bound solid phase substrate from the magnetic force after the target-bound solid phase substrate communicates with the droplet of the fluid at the second region of the surface of the first plate (paragraph [0275]); wherein; movement of at least one of the first plate and the second plate with respect to each other (paragraph [0187]) causes Couette flow (Couette flow would occur as the two plates are moved parallel with each other) within the droplet of the fluid such that the droplet of the fluid mixes within itself (there would be some amount of mixing as the plates are moved relative to each other); the droplet of the fluid has a surface tension (there would be surface tension of the droplet); and a posterior end of the droplet of fluid pulls target-bound solid phase substrate off the hydrophobic surface of the second plate (paragraph [0275]).
Regarding claim 2, Ismagilov teaches wherein portions of the surface of the first plate outside of the first and second regions are hydrophobic (paragraphs [0336] and [0338]).
Regarding claim 3, Ismagilov teaches wherein the second plate moves along a longitudinal axis between first and second positions (paragraph [0187] and figure 15).
Allowable Subject Matter
Claims 14-19 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record is Ismagilov which teaches providing a droplet of a biological sample, positioning an upper plate in a spaced relationship to a lower plate, drawing the target bound solid phase substrate toward the surface and moving the lower plate in a horizontal plane. However, the prior art does not disclose, teach or suggest the claimed combination of the moving of the upper plate causes the target bound solid phase substrate to break the surface tension of the droplet of the biological sample such that the target bound solid phase substrate exit the droplet of the biological sample and are isolated from the biological sample.
Response to Arguments
Applicant's arguments filed 12/2/2025 have been fully considered but they are not persuasive.
Regarding applicant’s argument that Couette flow is the flow of a viscous fluid in a space between two parallel surfaces, where one surface moves relative to the other causing shear stress and initiating flow is not found persuasive. As is evidenced by Mongiovi, et al., “Non-equilibrium thermodynamics, heat transport and thermal waves in laminar and turbulent superfluid helium,” Physics Reports, Vol 726, (2018) pages 1-71, hereinafter Mongiovi, teaches on page 63, section 8.4.1, that Couette flow consists of the flow of a fluid between two surface moving at different velocities. Based upon this definition of Couette flow, as the two plates (items 12 and 14) move with respect to one another, the flow that is created would be considered to be Couette flow. The examiner additionally notes that the following portion of the sentence states that Couette flow may be two concentric cylinders with different angular velocities, further showing that there are more types of Couette flow other than what the applicant is stating.
Additionally, as the type of flow which is occurring in Ismagilov is Couette flow, there would be some amount of mixing of the fluids and this mixing is taken to be due to the sliding of the two plates relative to each other and therefore would be due to the Couette flow.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW D KRCHA whose telephone number is (571)270-0386. The examiner can normally be reached M-Th 7am-5pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at (571)270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MATTHEW D KRCHA/Primary Examiner, Art Unit 1796
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