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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 9, 2026 has been entered.
Notes
All the objections and rejections in the previous Office Action not reiterated herein have been withdrawn.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) and under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 63/117,748, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claims 7-9 and 12 of this application require wherein the at least one electrode has a radius of 0.1-100 µm; wherein the at least one electrode has a height of 0.1-1000 µm; and, wherein the at least one electrode is at least one shape selected from the group consisting of a pin shape and a suspended shape. However, provisional Application No. 63/117,748 does not provide adequate support for said limitations.
Election/Restrictions
Amended independent claim 6 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Originally presented invention is directed to an invention that is independent or distinct from the invention presented in newly submitted claim 6. Originally presented invention corresponds to the embodiment as disclosed in FIGS. 7A-7B, while the newly presented invention corresponds to the embodiment disclosed in FIG. 14 which is structurally different than the first embodiment. For example, the embodiment as disclosed in FIGS. 7A-7B requires, for example, at least one electrode that is positioned centrally between at least one inlet aperture and at least one outlet aperture (previously presented claim 13) that is not required by the embodiment disclosed in FIG. 14. The scope of the claims, therefore, does not overlap.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 6-13 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
Claim 1 is objected to because of the following informalities: In claim 1, the limitation “non-contact Multiphysics” in line 17 should read -- non-contact Multiphysics -- for consistency.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Amended independent claim 1 recites the limitation "a plurality of electrodes embedded within the non-contact multi physics probe, wherein a subset of the plurality of electrodes is configured as at least one counter electrode, wherein at least one of the plurality of electrodes is electrically isolated from the at least one counter-electrode," and dependent claim 4 recites the limitation “culture glass slide is coated with an Indium Tin Oxide (ITO) substrate,” however, said limitations constitute new matter. The instant specification, as originally filed, discloses a plurality of embodiments including an embodiment (FIGS. 19A-19B) disclosing a working electrode and a counter electrode integrated to a tip of microfluidic probe (MFP) (see [0062], [0146]). The culture glass substrate in said embodiment is not configured as a counter electrode (see [0062], [0146]). However, FIGS. 19A-19B do not disclose wherein the working electrode and the counter electrode are embedded into microfluidic probe, a subset of a plurality of electrodes, and that the cell culture glass slide is coated with an Indium Tin Oxide (ITO) substrate, as claimed. As such, said limitations constitute new matter.
Claim 3 is rejected by virtue of its dependency upon a rejected base claim.
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.
Claims 1 and 3-4 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 limitation "wherein a subset of the plurality of electrodes is configured as at least one counter electrode" in lines 10-11. However, it is unclear as to how many counter electrodes are required by the claim. It is unclear whether one of the plurality of electrodes in configured as a counter electrode, or the entire subset is configured as counter electrodes. Further clarification is requested and appropriate correction is required.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-13 have been considered but are moot in view of the new ground of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Numano et al. (JP 2017-104073-A) disclose a supporting member, a positioner and a probe adapter comprising a plurality of electrodes. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIBAN M HASSAN whose telephone number is (571)270-7636. The examiner can normally be reached on 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Marcheschi can be reached on 5712721374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIBAN M HASSAN/Primary Examiner, Art Unit 1799
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