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 .
Claim Interpretation
Regarding limitations recited in claims 1-14 which are directed to a manner of operating the disclosed structure, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 5-9, 12-16, and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al. (US 2020/0144369 A1, cited in IDS filed 10/05/2021).
Regarding claim 1, Lin discloses a structure (Fig. 8) comprising:
a first layer (see: substrate 102), wherein the first layer has a first surface (see: bottom exterior surface of substrate 102) and a second surface opposite the first surface (see: top surface of substrate 102 which is coplanar to the bottom surface of shallow trench isolation (STI) material 127) and includes a recess in the second surface and wherein a bottom of the recess is within the first layer at a level above the first surface (see: substrate cavity 104);
isolation regions adjacent the second surface (see: left and right portions of shallow trench isolation (STI) material 127);
an intermediate layer extending laterally between the isolation regions and over the recess, wherein the intermediate layer has a planar top surface (see: stack 110 and gate dielectric 130, which both have flat top surfaces); and
a contact-free biosensor on the intermediate layer aligned above the recess, wherein the contact-free biosensor includes at least one transistor device (see: transistor 152), and wherein the at least one transistor device includes, above and immediately adjacent to the planar top surface, source/drain regions (see: S/D regions 112 in contact with stack 110) and a channel region positioned laterally between the source/drain regions (Fig. 8, see: region between S/D regions 112 and above both the stack 110 and bottom surfaces of the gate dielectric 130).
Regarding claim 2, Lin further discloses the at least one transistor device is configured to detect characteristics of a fluid under test within the recess (Fig. 8, see: inlet 111) using a time-varying electromagnetic field passing between the at least one transistor device and the recess ([0087], see: circuitry includes capacitors, decoupling capacitors, resistors, inductors, fuses, diodes, transformers, sensors, electrostatic discharge (ESD) devices, power amplifiers, power management devices, antennas, arrays, sensors) which are fully capable of providing a time-varying power supply).
Regarding claim 5, Lin further discloses the contact-free biosensor is positioned relative to the recess in a location to detect characteristics of a fluid under test within the recess using a time-varying electromagnetic field at least one of generated and received by the contact-free biosensor (since the prior art device comprises the same structures arranged in the same configuration as instantly claimed, it is the position of the Examiner that the prior art device is fully capable of being used to perform the same instantly claimed functions).
Regarding claim 6, Lin further discloses a fluid receptacle in the second surface at an end of and opening into the recess, wherein the recess is shaped and sized to receive and transport fluid under test supplied to the fluid receptacle past the contact-free biosensor (Fig. 8, see: inlet 111).
Regarding claim 7, Lin further discloses the first layer comprises at least one substrate (Fig. 8, see: substrate 102), and wherein the intermediate layer comprises at least one of: a buried oxide layer; and a silicon oxide layer ([0065], see: plurality of oxide materials, including silicon oxide for the gate dielectric 130).
Regarding claim 8, Lin discloses a structure (Fig. 11A, details in Fig. 8) comprising:
a first layer (see: substrate 102), wherein the first layer has a first surface (see: bottom exterior surface of substrate 102) and a second surface opposite the first surface (see: top surface of substrate 102 which is coplanar to the bottom surface of shallow trench isolation (STI) material 127) and includes a recess in the second surface and wherein a bottom of the recess is within the first layer at a level above the first surface (see: substrate cavity 104);
isolation regions adjacent the second surface (see: left and right portions of shallow trench isolation (STI) material 127);
an intermediate layer extending laterally between the isolation regions and over the recess (see: stack 110 and gate dielectric 130), wherein the intermediate layer has a planar top surface (see: stack 110 and gate dielectric 130, which both have flat top surfaces); and
a plurality of contact-free biosensors on the intermediate layer aligned above the recess, wherein the contact-free biosensors include transistor devices (see: plurality of transistors 152), and wherein each transistor device includes, above and immediately adjacent to the planar top surface, source/drain regions (see: S/D regions 112 in contact with stack 110) and a channel region positioned laterally between the source/drain regions (Fig. 8, see: region between S/D regions 112 and above both the stack 110 and bottom surfaces of the gate dielectric 130).
Regarding claim 9, Lin further discloses the transistor devices are configured to detect characteristics of a fluid under test within the recess (Fig. 8, see: inlet 111) using a time-varying electromagnetic field passing between the at least one transistor device and the recess ([0087], see: circuitry includes capacitors, decoupling capacitors, resistors, inductors, fuses, diodes, transformers, sensors, electrostatic discharge (ESD) devices, power amplifiers, power management devices, antennas, arrays, sensors) which are fully capable of providing a time-varying power supply).
Regarding claim 12, Lin further discloses the contact-free biosensors are positioned relative to the recess in locations to detect characteristics of a fluid under test within the recess using a time-varying electromagnetic field at least one of generated and received by the contact-free biosensors (since the prior art device comprises the same structures arranged in the same configuration as instantly claimed, it is the position of the Examiner that the prior art device is fully capable of being used to perform the same instantly claimed functions).
Regarding claim 13, Lin further discloses a fluid receptacle in the second surface at an ed of and opening into the recess, wherein the recess is shaped and sized to transport fluid under test supplied to the fluid receptacle past the contact- free biosensors (Fig. 8, see: inlet 111).
Regarding claim 14, Lin further discloses the first layer comprises at least one substrate (Fig. 11A, see: substrate 102), and wherein the intermediate layer comprises at least one of: a buried oxide layer; and a silicon oxide layer ([0065], see: plurality of oxide materials, including silicon oxide for the gate dielectric 130).
Regarding claim 15, Lin discloses a method (Fig. 8, Fig. 13) comprising:
forming a first layer (see: substrate 102) to include a recess (see: substrate cavity 104), wherein the first layer has a first surface (see: bottom exterior surface of substrate 102) and a second surface opposite the first surface (see: top surface of substrate 102 which is coplanar to the bottom surface of shallow trench isolation (STI) material 127) and wherein a bottom of the recess is within the first layer at a level above the first surface (see: substrate cavity 104 does not extend through the bottom exterior surface of substrate 102);
forming isolation regions adjacent to the second surface (see: left and right portions of shallow trench isolation (STI) material 127);
forming an intermediate layer adjacent to the second surface, wherein the intermediate layer extends laterally between the isolation regions over the recess (see: stack 110 and gate dielectric 130), and wherein the intermediate layer has a planar top surface (see: stack 110 and gate dielectric 130, which both have flat top surfaces); and
forming a contact-free biosensor on the intermediate layer aligned above the recess, wherein the contact-free biosensor includes at least one transistor device (see: transistor 152), and wherein the at least one transistor device includes, above and immediately adjacent to the planar top surface, source/drain regions (see: S/D regions 112 in contact with stack 110) and a channel region positioned laterally between the source/drain regions (Fig. 8, see: region between S/D regions 112 and above both the stack 110 and bottom surfaces of the gate dielectric 130).
Regarding claim 16, Lin further discloses the at least one transistor device is configured to detect characteristics of a fluid under test within the recess (Fig. 8, see: inlet 111) using a time-varying electromagnetic field passing between the at least one transistor device and the recess ([0087], see: circuitry includes capacitors, decoupling capacitors, resistors, inductors, fuses, diodes, transformers, sensors, electrostatic discharge (ESD) devices, power amplifiers, power management devices, antennas, arrays, sensors) which are fully capable of providing a time-varying power supply).
Regarding claim 19, Lin further discloses the contact-free biosensor is formed to be positioned relative to the recess in a location to detect characteristics of a fluid under test within the recess using a time-varying electromagnetic field at least one of generated and received by the contact-free biosensor (Fig. 8, see: transistor 152 is arranged directly above the substrate cavity 104).
Regarding claim 20, Lin further discloses forming a fluid receptacle in the second surface at an end of and opening into the recess, wherein the recess is formed to be shaped and sized to transport fluid under test supplied to the fluid receptacle past the contact-free biosensor (Fig. 8, see: inlet 111).
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 (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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 3-4 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (US 2020/0144369 A1, cited in IDS filed 10/05/2021), in view of Urdea et al. (US 2020/0150066 A1).
Regarding claims 3-4 and 10-11, Lin does not explicitly disclose the recess comprises a plurality of recesses positioned across the intermediate later from each contact-free biosensor, comprising a plurality of dividers within the recess.
Urdea teaches an analogous device (Figure 7), comprising a plurality of transistors disposed on a substrate having a plurality of recesses separated from each other via a plurality of dividers in the substrate (Figure 7). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to configure the recess in device disclosed by Lin, into the compartmentalized arrangement taught by Urdea, since such a configuration would have amounted to the mere duplication of the structures disclosed by Lin onto the same substrate. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 124 USPQ 378, 380 (CCPA 1960). Further, it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Response to Arguments
Applicant's arguments filed 09/12/2025 have been fully considered but they are not persuasive.
The Examiner respectfully disagrees with the Applicant’s assertion that the cited prior art fails to teach or suggest the instantly recited source/drain regions and a channel region being “above and immediately adjacent to the planar top surface”. Lin explicitly discloses both the analogous source/drain regions (Fig. 8, see: 112) and the analogous channel region (Fig. 8, see: region between S/D regions 112) being in contact with the top surface of the analogous intermediate later (Fig. 8, see: 110).
The Examiner respectfully disagrees with the Applicant’s assertion that the cited prior art fails to teach or suggest the transistor being “configured to detect characteristics of a fluid under test within the recess”. Lin explicitly claims the device includes a plurality of ports in fluid communication with the cavity (Clam 12), and that the seal material is optionally used in some embodiments of the device [0030].
The Examiner respectfully disagrees with the Applicant’s assertion that the cited prior art fails to teach or suggest the transistor being configured to detect characteristics of a fluid “using a time-varying electromagnetic field passing between the at least one transistor device and the recess”. Lin explicitly discloses a plurality of circuitry components [0087] which are fully capable of being used by the operator to operate the transistor to perform the instantly recited functionality. A recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform. The recitation of a new intended use for an old product does not make a claim to that old product patentable. In re Schreiber, 44 USPQ2d 1429 (Fed. Cir. 1997). Since the prior art device comprises the same structures arranged in the same configuration as instantly claimed, it is the position of the Examiner that the prior art device is fully capable of being used to perform the same instantly claimed functions.
The Applicant’s remaining arguments rely on the same alleged deficiencies which have been addressed above.
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 ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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, Lyle Alexander can be reached at 5712721254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J EOM/ Primary Examiner, Art Unit 1797