Detailed Action
This is a Final Office action based on application 17/438,000 filed on 10 September 2021. The application is a 371 of PCT/ US2020 /022544, with priority to US provisional applications 62/817,821 and 62/817,825 filed 13 March 2019.
Claims 2-8 and 10-18 are pending, claims 3 and 14-18 are withdrawn, and claims 2, 4-8, and 10-13 have been fully considered.
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 .
Status of the Rejection
The §112 rejections are overcome by amendment and are withdrawn.
The §102 rejection of claim 1 is moot because claim 1 has been canceled.
The §103 rejection of claim 2 is maintained.
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.
Claims 2, 4-8, 10-11, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Murray et al (US 2009/0142825 A1) in view of Smolko et al (US 6,284,117 B1).
Regarding claim 2, Murray teaches a system for removing a plurality of ions from a sample (para [0007], “a composite detection device having in-line desalting”), the system comprising:
a substrate (figure 1, semiconductor substrate 34 having patterned insulator later 32 formed on it; para [0030]);
a desalting chamber proximate the substrate (figure 1, desalting unit comprises salt reservoir 37, membrane 24; para [0030], membrane 24 is disposed on the substrate);
a microfluidic channel (figure 1, channel 20); and
a sensing chamber proximate the substrate, the sensing chamber comprising at least one sensor (figure 1, sensor 28; para [0030], sensor 28 is disposed on the substrate),
wherein the desalting chamber and the sensing chamber are in fluidic communication via the microfluidic channel (as shown in figure 1).
Murray’s desalting chamber comprises a porous material (figure 1 membrane 24) and a reservoir of low-ionic strength liquid (figure 1 reservoir 37), and operates by the passive diffusion of ions from the more concentrated analyte stream to the less concentrated salt sink stream (para [0026]-[0027], [0032]).
Murray does not teach a desalting chamber comprising a first electrode, a first porous material adjacent to at least a portion of the first electrode, a second electrode in electrical communication with the first electrode, and a second porous material adjacent to at least a portion of the second electrode.
Smolko teaches a system for removing a plurality of ions from a sample (abstract, “apparatus and method for desalting”; figure 3), the system comprising: a desalting chamber (figure 3), a microfluidic channel (col 5 ln 60-61, “microchannels”); and a sensing chamber (col 5 ln 56-60, “an electronically addressable microarray”), the sensing chamber comprising at least one sensor (col 5 ln 57-58, “performing assays on ... microarray”; col 6 ln 33-38, an exemplary sensor is a microelectronic assay that binds nucleic acid analyte and detects via a fluorescent label), wherein the desalting chamber and the sensing chamber are in fluidic communication via the microfluidic channel (col 5 ln 60-62, “microchannels ... connect the desalting apparatus to the microarray”). In one embodiment (figure 1, col 4 ln 7-12), Smolko’s desalting chamber comprises porous material (figure 1, ion exchange resin 11; col 3 ln 34-47, the ion exchange resin is a water-permeable bed of granulated or powdered resin, i.e. a porous material) and a low ionic stream liquid stream (figure 1, col 4 ln 7-12, “ports 12 and 13 for channeling low ionic strength buffer or water”) and operates by the passive diffusion of ions from the analyte stream into the porous material. In a second embodiment (figure 3, col 4 ln 22-29, col 5 ln 36-55), Smolko’s desalting chamber comprises a first electrode and second electrode (figure 3, electrodes 22; col 3 ln 36-55, an electric potential may be applied between the two electrodes), a first porous material adjacent to at least a portion of the first electrode, and a second porous material adjacent to at least a portion of the second electrode (figure 3, a first portion of ion exchange resin material 11 is disposed adjacent one of the two electrodes 22, and a second portion of material 11 is disposed adjacent the other electrode; col 3 ln 34-47, the IER material is a porous bed of granulated or powdered resin). Smolko teaches that the second of these embodiments adds electrically-driven deionization on top of the passive deionization of the first embodiment (col 4 ln 26-27), with the result that samples are desalted quickly and thoroughly (col 5 ln 45-55).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the desalting chamber of Murray’s system, by incorporating first and second electrodes having first and second porous materials adjacent thereto in order to achieve quicker and more effective desalting of analyte solutions, as taught by Smolko. All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results. The incorporation of a predictable improvement into a known base invention, based on a finding that the prior art contained a comparable device that has been improved in the same way, is prima facie obvious as being part of the ordinary capabilities of one skilled in the art (MPEP 2143(C)).
Regarding claim 4, Murray and Smolko render obvious the system of claim 2, and Murray teaches that the desalting chamber is positioned adjacent the substrate ((figure 1, para [0030], the desalting chamber (comprised of membrane 24 and reservoir 37) is adjacent the substrate (comprised of semiconductor layer 34 and insulator layer 32)).
Regarding claim 5, Murray and Smolko render obvious the system of claim 2, and Murray teaches that the desalting chamber and the sensing chamber are positioned adjacent the substrate (figure 1, para [0030], the desalting chamber (comprised of membrane 24 and reservoir 37) and the sensing chamber (comprising sensor 28) are adjacent the substrate (comprised of semiconductor layer 34 and insulator layer 32)).
Regarding claim 6, Murray and Smolko render obvious the system of claim 2, and Murray teaches that the sensing chamber is positioned adjacent to a second substrate (figure 1, upper wall 14 of the microfluidic device 12 reasonably reads as a second substrate; para [0028], wall 14 may be a substrate made of glass, silicon, or polymer).
Regarding claim 7, Murray and Smolko render the system of claim 2 obvious, and Murray further teaches the sensor comprises a field effect biosensor (para [0006], “desalting for nano-FET biosensor”; para [0029], the sensor operates by detecting changes in the conductance of a channel upon binding of analyte to the channel surface).
Regarding claim 8, Murray and Smolko render the system of claim 2 obvious, and Murray further teaches the sensor comprises a silicon nanowire and at least one antibody (para [0020], the sensor comprises a semiconductor nanowire; para [0021], the semiconductor from which it is made is silicon; para [0029], the nanowire is functionalized with a species that binds a molecule of interest; para [0023], the functional species may be an antibody).
Regarding claim 10, Murray and Smolko render the system of claim 2 obvious, and Smolko teaches wherein the first porous material comprises a resin (col 4 ln 10, the porous material 11 is ion exchange resin; col 5 ln 25-35).
Regarding claim 11, Murray and Smolko render the system of claim 2 obvious, and Smolko teaches wherein the first porous material comprises a size exclusion material (figure 3, the porous material also comprises membrane material 10; col 5 ln 19-25, the membrane is a size exclusion membrane).
Regarding claim 13, Murray and Smolko render the system of claim 2 obvious, and Smolko teaches wherein the first porous material comprises a nanoporous material (col 5 ln 19-20, porous material includes a size exclusion membrane with a pore size cutoff of from 1 to 500 kDa).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Smolko as applied to claim 1 above, in view of Sun (CN 107473397 A; hereinafter, citations to Sun are taken from a machine translation of the document into English).
Regarding claim 12, Murray and Smolko render the system of claim 2 obvious, but do not teach that the porous material comprises dangling bonds configured to associate with at least a portion of the plurality of ion.
Sun teaches a water purifying composition for use in water purification, comprising as one of its ingredients, iron oxide sorbent nanoparticles (translated pg 5 paragraph 4; translated pg 6 paragraph 2). Sun teaches that the iron oxide particles comprise dangling bonds configured to associate with ions in the water being treated, and that such dangling bonds improve the sorbent’ adsorption capacity toward metal contaminant species (translation pg 6 paragraph 2, “undersaturated dangling bonds in surface atom can improve surface-active site, make it have very strong energy of adsorption Power, compared to traditional flocculant, it can the effective impurity such as the suspension in absorption effluent, metal, metal oxide”; translated pg 10 paragraph 2).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Smolko by including, in the porous material, sorbent material comprising dangling bonds configured to associate with ions in the water as taught by Sun, in order to improve the effectiveness of Smolko’s desalting apparatus for removal of metal species in the water. 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 [MPEP § 2144.07].
Response to Arguments
Applicant's arguments (see Remarks filed 28 May 2026) have been fully considered but they are not persuasive.
In the previous Office Action, Claim 2 was rejected on §103 grounds based on Murray in view of Smolko.
Applicant argues that the Murray and Smolko references fail to suggest the claimed feature of a first porous material and a second porous material, because the art shows only a first porous material and does not show a second material.
Applicant’s argument is unpersuasive because the feature allegedly absent from Murray and Smolko is shown in Smolko. Smolko’s desalting chamber comprises a first electrode and second electrode (figure 3, electrodes 22; col 3 ln 36-55, an electric potential may be applied between the two electrodes), with a first porous material adjacent to at least a portion of the first electrode, and a second porous material adjacent to at least a portion of the second electrode (figure 3, a first portion of ion exchange resin material 11 is disposed adjacent one of the two electrodes 22, and a second portion of material 11 is disposed adjacent the other electrode; col 3 ln 34-47, the IER material is a porous bed of granulated or powdered resin).
Applicant also argues that §103 the grounds of rejection is based on impermissible hindsight.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In this case, the reconstruction is proper, because the knowledge relied upon in the obviousness rejection was gleaned from the Murray and Smolko references which were both published before the effective filing date of Applicant’s disclosure.
The rejection of claim 2 is therefore maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/ANDREW KOLTONOW/Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795
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