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 .
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All the objections and rejections in the previous Office Action not reiterated herein have been withdrawn.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.
Claim Objections
Claim(s) 4 is/are objected to because of the following informalities: In claim 4, limitation “ITO substrate” should read “an indium tin oxide (ITO) substrate.” Appropriate correction is required.
Claim Rejections - 35 USC § 102
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) 6 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brimmo et al. (already of record, Lab Chip. 2019, 19, 4052-4063) (hereinafter “Brimmo”).
Regarding claim 6, modified Brimmo discloses a non-contact multiphysics probe, comprising: at least one aperture (FIG. 1b: probe having a plurality of microfluidic apertures; see page 4054, right column; page 4055); and at least one electrode (FIG. 1-b: array of microhump electrodes coupled to the probe; pages 4054-4055). Furthermore, it is noted that the recitation of functional language "wherein the non-contact multiphysics probe is configured to perform electropermealization and electroheating in combination with hydrodynamic flow confinement using the at least one electrode and the at least one aperture" is drawn to intended use of the claimed invention. It is noted that 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. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). Furthermore, the intended uses of the non-contact multiphysics probe and the at least one aperture do not further define any structural features to the non-contact multiphysics probe and the at least one aperture but rather only define how the non-contact multiphysics probe and the at least one aperture may be used. The prior art discloses all of the structural features of the claimed non-contact multiphysics probe and the at least one aperture and thus since the structures are the same, the claimed functions are apparent.
Regarding claim 8, Brimmo further discloses wherein the at least one electrode has a height of 0.1-1000 µm (page 4053, left column).
Regarding claim 9, Brimmo further discloses wherein the at least one electrode is at least one shape selected from the group consisting of a dome shape, a pin shape, a conical shape, a spiked shape, a cylindrical shape, a suspended shape, and a pyramidal shape (FIG. 1b(ii): hump-shaped electrodes; see pages 4054-4055).
Regarding claim 10, Brimmo further discloses wherein the at least one aperture of the non-contact multiphysics probe further comprises a plurality of apertures, wherein the plurality of apertures comprises at least one inlet aperture and at least one outlet aperture (FIG. 1a: the probe includes an inlet aperture and an outlet aperture; pages 4054-4055).
Regarding claim 11, Brimmo further discloses wherein the at least one inlet aperture has a radius of 0.1- 1000 µm (see page 4057), and the at least one outlet aperture has a radius of 0.1-1000 µm (see page 4057).
Regarding claim 12, Brimmo further discloses wherein the at least one inlet aperture and the at least one outlet aperture are spaced at least 1 µm center-to-center apart (see page 4057).
Therefore, Brimmo meets and anticipates the limitations set forth in claim(s) 6 and 8-12.
Claim(s) 6-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brimmo et al. (Microfluidics, BioMEMS, and Medical Microsystems XVII. Vol. 10875. SPIE, 2019, pages 1-8) (hereinafter “SPIE”).
Regarding claim 6, SPIE discloses a non-contact multiphysics probe, comprising: at least one aperture (see FIGS. 1b-c: fluidic apertures; pages 2-3); and at least one electrode (FIG. 2a: pin-shaped microelectrodes). Furthermore, it is noted that the recitation of functional language "wherein the electrode and aperture are configured to perform electropermealization and electroheating in combination with hydrodynamic flow confinement" is drawn to intended use of the claimed invention. It is noted that 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. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). Furthermore, the intended uses of the non-contact multiphysics probe do not further define any structural features to the non-contact multiphysics probe but rather only define how the non-contact multiphysics probe may be used. The prior art discloses all of the structural features of the claimed non-contact multiphysics probe and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 7, SPIE further discloses wherein the at least one electrode has a radius of 0.1-100 µm (see page 2).
Regarding claim 8, SPIE further discloses wherein the at least one electrode has a height of 0.1-1000 µm (see page 2).
Regarding claim 9, SPIE further discloses wherein the at least one electrode is at least one shape selected from the group consisting of a dome shape, a pin shape, a conical shape, a spiked shape, a cylindrical shape, a suspended shape, and a pyramidal shape (see page 2).
Regarding claim 10, SPIE further discloses wherein the at least one aperture of the non-contact multiphysics probe further comprises a plurality of apertures, wherein the plurality of apertures comprises at least one inlet aperture and at least one outlet aperture (FIGS. 1b-c and page 2: aspiration and injection apertures).
Regarding claim 11, SPIE further discloses wherein the at least one inlet aperture has a radius of 0.1- 1000 µm (see page 2: injection and aspiration apertures), and the at least one outlet aperture has a radius of 0.1-1000 µm (see page 2: injection and aspiration apertures).
Regarding claim 12, SPIE further discloses wherein the at least one inlet aperture and the at least one outlet aperture are spaced at least 1 µm center-to-center apart (see page 2).
Regarding claim 13, SPIE further discloses wherein the at least one electrode is positioned centrally between the at least one inlet aperture and the at least one outlet aperture (see FIGS. 1b(ii) and 1c: at least one electrode between the injection aperture and aspiration aperture; page 2).
Therefore, SPIE meets and anticipates the limitations set forth in claim(s) 6-13.
Claim Rejections - 35 USC § 103
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brimmo et al. (already of record, Lab Chip. 2019, 19, 4052-4063) (hereinafter “Brimmo”).
Regarding claims 1 and 3, Brimmo discloses a non-contact cell manipulation system, comprising: a supporting member (FIG. 1c: stage of an inverted microscope; page 4053, right column, first paragraph); a micro-positioner (FIG. 1c: XYZ micropositioner; page 4053, right column, first paragraph); a probe holder having a proximal end and a distal end, the proximal end connected to the micro-positioner (FIG. 1c: 3D printed probe holder; page 4053, right column, first paragraph); a probe adapter removably connected to the distal end of the probe holder (FIGS. 1a-c: the adapter coupled to the probe holder and having inlet port and outlet port; page 4054, right column; page 4055); and a non-contact multiphysics probe fluidly and electrically connected to the probe adapter (FIGS. 1a-c: inlet port, outlet port, and electrical contact of the adapter are coupled to a tip; page 4054, right column; page 4055), wherein the non-contact multiphysics probe includes at least one electrode embedded within the non-contact multiphysics probe (FIG. 1-b: an array of microelectrodes integrated within a tip of the probe; page 4053), at least one aperture (FIG. 1a: tip includes inlet and outlet apertures; pages 4054-4055). Brimmo does not explicitly disclose wherein the non-contact multiphysics probe is electrically coupled to a controller (computer). However, the non-contact multiphysics probe of Brimmo is electrically coupled to a power source for generating various electrical forces (page 4053). Further, non-uniform electric fields are introduced into the system (page 4056). It would therefore have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a controller with the non-contact multiphysics probe of Brimmo for the purpose of automating the functions of the non-contact multiphysics probe. One of ordinary skill in the art at would have made said modification for the purpose of increasing the throughput of the system and to prevent user errors. Furthermore, it is noted that the recitation of functional language "to cause the non-contact multiphysics probe to perform electropermealization and electroheating in combination with hydrodynamic flow confinement to perform non-contact cell manipulation" is drawn to intended use of the claimed invention. It is noted that 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. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). Furthermore, the intended uses of the apparatus do not further define any structural features to the non-contact multiphysics probe but rather only define how the non-contact multiphysics probe and controller may be used. The prior art discloses all of the structural features of the claimed non-contact multiphysics probe and controller, and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 2, modified Brimmo further discloses wherein the at least one electrode further comprises a plurality of electrodes (FIG. 1-b: an array of microelectrodes integrated within a tip of the probe; page 4053). Further, the plurality electrodes of Brimmo are structurally the same as the instant plurality of electrode and thus considered that a subset of the plurality of electrodes to be capable to function as counter-electrodes.
Regarding claim 4, modified Brimmo further discloses a cell culture glass slide coated with an indium tin oxide (ITO) substrate (FIG. 1c: glass slide coated with an ITO substrate; see page 4053).
Regarding claim 5, modified Brimmo further discloses wherein the at least one electrode and the ITO coated substrate form a pin-plate electrode (see page 4053, right column).
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brimmo et al. (Microfluidics, BioMEMS, and Medical Microsystems XVII. Vol. 10875. SPIE, 2019, pages 1-8) (hereinafter “SPIE”).
Regarding claim 1, SPIE discloses a non-contact cell manipulation system, comprising: a supporting member (FIG. 2b: support for cell culture substrate; see page 4); a micro-positioner (FIG. 2a; portable XYZ micropositioner; see pages 2-3); a probe holder having a proximal end and a distal end, the proximal end connected to the micro-positioner (see FIGS. 2a-b and pages 2-3); a probe adapter removably connected to the distal end of the probe holder (see FIGS. 2a-b and pages 3-4); a non-contact multiphysics probe fluidly and electrically connected to the probe adapter (FIGS. 2a-b and pages 3-4), wherein the non-contact multiphysics probe includes at least one electrode embedded within the non-contact multiphysics probe (FIG. 2a: pin-shaped microelectrodes embedded within the probe; see pages 2 to 3), at least one aperture (see FIGS. 1b-c and 2a-b: fluidic apertures; pages 2-3); and SPIE does not explicitly disclose wherein the non-contact multiphysics probe is electrically coupled to a controller (computer). However, the non-contact multiphysics probe of SPIE is electrically coupled via electrical contacts to a power source for generating electrical forces (pages 2 and 7). It would therefore have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have employed a controller with the non-contact multiphysics probe of SPIE for the purpose of automating the functions of the non-contact multiphysics probe. One of ordinary skill in the art at would have made said modification for the purpose of increasing the throughput of the system and to prevent user errors. Furthermore, it is noted that the recitation of functional language "to cause the non-contact multiphysics probe to perform electropermealization and electroheating in combination with hydrodynamic flow confinement to perform non-contact cell manipulation" is drawn to intended use of the claimed invention. It is noted that 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. Apparatus claims must distinguish from the prior art in terms of structure rather than function (see MPEP 2114). Furthermore, the intended uses of the apparatus do not further define any structural features to the non-contact multiphysics probe but rather only define how the non-contact multiphysics probe may be used. The prior art discloses all of the structural features of the claimed non-contact multiphysics probe and thus since the structure is the same, the claimed functions are apparent.
Regarding claim 2, modified SPIE further discloses wherein the at least one electrode further comprises a plurality of electrodes (FIG. 2a: pin-shaped microelectrodes embedded within the probe; see pages 2 to 3). Further, the plurality electrodes of modified SPIE are structurally the same as the instant plurality of electrode and thus considered that a subset of the plurality of electrodes to be capable to function as counter-electrodes.
Regarding claim 3, modified SPIE further discloses wherein the non-contact multiphysics probe is a 3D printed part (see FIG. 2b and page 2).
Regarding claim 4, modified SPIE further discloses a cell culture glass slide coated with an indium tin oxide (ITO) substrate (FIGS. 1c and 2b: glass slide coated with ITO; see pages 1, 3-4 and 7; abstract).
Regarding claim 5, modified SPIE further discloses wherein the at least one electrode and the ITO coated substrate form a pin-plate electrode (FIG. 1c).
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.
Applicant argues that Brimmo fails to disclose a non-contact cell manipulation system (see Remarks at pages 7 to 13). In response to the applicant's argument that Brimmo fails to teach a non-contact cell manipulation system because Brimmo isolates cell by making contact with them (Remarks at pages 7), a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, Brimmo discloses all of the structural features of the claimed non-contact multiphysics. Further, nothing in the claims that precludes the probe from being in contact with cells (cells are not a required element of the claimed system). Moreover, Brimmo explicitly discloses in at least one instance wherein the probe is not in contact with cells (see, e.g., FIG. 1(a) (iii)). As such, it is respectfully submitted that Brimmo meets all of the structural features of the claimed non-contact multiphysics probe. Applicant further argues that Brimmo fails to disclose a probe adapter (Remarks at page 9). In response, as shown in FIGS. 1(b) and 1(c), annotated and reproduced below, clearly show a probe adapter and a multiphysics probe (i.e., tip coupled to the probe adapter).
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Applicant further argues that Brimmo fails to teach electroheating and electropermealization (Remarks at page 9). In response, regarding claim 1, the examiner would respectfully contend that the limitation “to cause the non-contact multiphysics probe to perform electropermealization and electroheating in combination with hydrodynamic flow confinement to perform non-contact cell manipulation” is drawn to the intended uses of the claimed non-contact multiphysics probe. It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In this case, claim 1 requires a controller that is capable of performing the recited function of “to perform electropermealization and electroheating in combination with hydrodynamic flow confinement to perform non-contact cell manipulation.” The recitation of the intended use of the claimed controller does not result in structural differences between the claimed controller and that of modified Brimmo. Therefore, since the controller coupled to the non-contact multiphysics probe of modified Brimmo is structurally the same as the instant controller, the controller of Brimmo is fully capable of performing the recited function. With respect to the Applicant’s argument regarding claim 6, the examiner would respectfully contend that the limitation “wherein the non-contact multiphysics probe is configured to perform electropermealization and electroheating in combination with hydrodynamic flow confinement using the at least one electrode and the at least one aperture” is drawn to the intended uses of the claimed non-contact multiphysics probe.” It is noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. In this case, claim 6 requires at least one electrode and at least one aperture that perform “electropermealization and electroheating in combination with hydrodynamic flow confinement.” There is no structural differences between the claimed at least one electrode and at least one aperture, and the at least one electrode and at least one aperture of modified Brimmo. Therefore, since the at least one electrode and at least one aperture of modified Brimmo is structurally the same as the instant at least one electrode and at least one aperture, the at least one electrode and at least one aperture of Brimmo are fully capable of performing the recited function.
In response to the Applicant’s arguments regarding the reference of SPIE (Remarks at pages 10 to 11), as discussed above, the limitation “to cause the non-contact multiphysics probe to perform electropermealization and electroheating in combination with hydrodynamic flow confinement to perform non-contact cell manipulation” recited in claim 1, and the limitation “wherein the non-contact multiphysics probe is configured to perform electropermealization and electroheating in combination with hydrodynamic flow confinement using the at least one electrode and the at least one aperture” recited in claim 6 are drawn to the intended uses of the claimed system. The recitations of the intended uses of the claimed controller, the at least one electrode and the at least one aperture do not result in any structural differences between the claimed controller, the at least one electrode and the at least one aperture and that of modified Brimmo. With respect to the Applicant argument that SPIE fails to disclose a probe adapter (Remarks at page 11). In response, as shown in FIGS. 2(a) and 2(b), annotated and reproduced below, clearly show a probe adapter and a multiphysics probe (i.e., tip coupled to the probe adapter).
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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 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