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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/02/2025 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the vapor jetting module comprising a carrier gas inlet and flow channel; a compound reservoir coupled to the vapor jetting module must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 33, 36, 43, 52, 53, 55-58, 61-69 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Shalev et al. (US 2018/0296494).
Regarding claim 33, Shalev et al. teach:
33. A testing station comprising:
a vapor jetting module comprising a source of a compound (e.g., first source 164, second source 174), heaters (e.g., 166, 176) capable of vaporizing the compound (see i.e., heating the first source 164 to sublimate or evaporate the first low molecular weight organic compound 200 so that it is in a vapor form [...] heating the second source 174 to sublimate or evaporate the second low molecular weight organic compound 202 so that it is a vapor form ¶ 0069), a carrier gas inlet (see i.e., an inlet 112 in which an inert carrier gas stream 120 enters ¶ 0060; first inert carrier gas stream 182 enters the first cylindrical reactor 162, while a second inert carrier gas stream 192 enters the second cylindrical reactor 172. ¶ 0069) and flow channel (see i.e., channels of 162/172 in Fig. 1b);
a compound reservoir (e.g., 162, 172, 210) capable of holding a compound vapor (see i.e., “The three streams including the vapor phase the first low molecular weight organic compound 200 and second low molecular weight organic compound 202 are combined and mixed together to form a mixed stream 214 that exits a nozzle 216 of the main cylindrical reactor 210 to form a jetted stream 218.” ¶ 0069) coupled to the vapor jetting module (see ¶ 0021, 0069-0072 & Figs. 1b-1d for example);
a nozzle array (e.g., multiple nozzles, 168, 178, 216) coupled to the compound reservoir (see Figs. 1b-1d & ¶ 0069, 0072-0073+ for example), the nozzle array comprising a plurality of nozzles (e.g., multiple nozzles, 168, 178, 216, see ¶ 0069, 0072-0073+ for example);
a substrate (e.g., 230) positioned to capable of receiving the compound vapor from the nozzle array (¶ 0069, 0072-0073+ for example), the substrate having one or more deposition regions capable for deposition of the compound on the substrate (see Figs. 1b-1d & ¶ 0069, 0072-0073+ for example), wherein the deposition regions are a plurality of confined regions (e.g., nanostructured regions) formed in the substrate (see Fig. 1b & ¶ 0046, 0054+ for example); and
a positioner (e.g., xyz motion controllers) capable of displacing at least one of the nozzle array or the substrate relative to the other (¶ 0060, 0073+).
With regard to limitations in claims 33, 36, 39, 52, 57, 58, 59, 66 (e.g., “[...] optionally a temperature probe and/or a mounting plate and tip holder to maintain the module in proper position for control of the module; [...] to hold a compound vapor [...] to receive [...] for deposition [...]”, “identifying a nozzle type for the nozzle array, [...]”, “[...] identifying the one or more depositions regions and/or the desired deposition protocol”, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Regarding limitations recited in claims 43, 52, 61-65, 67, 69, which are directed to method of forming the compound vapor/thin film (e.g., “formed by subliming a compound optionally in the presence of a carrier gas, or by vaporizing a solution of the compound in a solvent”, etc.), it is noted that said limitations are given little patentable weight in the product claims. Even though a product-by-process is defined by the process steps by which the product is made, determination of patentability is based on the product itself and does not depend on its method of production. In re Thorpe, 777 F.2d 695, 227 USPQ 964 (Fed. Cir. 1985). As the court stated in Thorpe, 777 F.2d at 697, 227 USPQ at 966 (The patentability of a product does not depend on its method of production. In re Pilkington, 411 F.2d 1345, 1348, 162 USPQ 145, 147 (CCPA 1969). If the product in a product-by-process claim is the same or obvious as the product of the prior art, the claim is unpatentable even though the prior art product was made by a different process.), see MPEP 2113 and 2114.
Regarding claims 36, 53, 55-58, 66, 68, Shalev et al. teach:
36. The testing station of claim 33, further comprising an adaptor interface (¶0069, 0073+).
53. The testing station of claim 33, further comprising a characterization attachment (i.e., “Concentration is measured by fluorescence spectroscopy” ¶ 0025).
55. The testing station of claim 33, wherein the substrate comprises a well, a post, a microwell plate, a dish, an artificial scaffold, or a natural scaffold (see ¶ 0111+; and e.g., 232).
56. The testing station of claim 55, wherein the deposition regions are a plurality of confined regions formed in the substrate (see Fig. 1b for example).
57. The testing station of claim 56, wherein the adaptor interface is capable of receiving a plurality of different nozzle arrays (see Fig. 1b & ¶ 0069, 0073+).
58. The testing station of claim 57, wherein the compound reservoir comprises a plurality of different compound vapors (¶ 0069+).
66. The testing station of claim 33, wherein the compound is a drug (¶ 0055+).
68. The testing station of claim 53, wherein the characterization attachment is a microscope or a micro spectroscopy module (i.e., “Concentration is measured by fluorescence spectroscopy” ¶ 0025).
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.
Claim(s) 39, 59 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shalev et al. (US 2018/0296494) in view of Coassin et al. (US 2002/0182117).
Regarding claims 39 & 59, Shalev et al. teach: wherein the nozzle array comprises a readable indicator (i.e., nozzle geometry for preselected deposit patterns, ¶ 0073+); and wherein the substrate comprises a readable indicator (¶ 0111+). However, Shalev et al. do not explicitly teach: 39. The testing station of claim 33, wherein the nozzle array comprises a readable indicator identifying a nozzle type for the nozzle array, and further comprising a controller. 59. The testing station of claim 39, wherein the substrate comprises a readable indicator identifying the one or more depositions regions or the desired deposition protocol.
Coassin et al. teach: A testing station comprising:
a compound reservoir (e.g., well 17) capable of holding a compound vapor (see ¶ 0053 for example);
a nozzle array (e.g., pipette adapter 32) coupled to the compound reservoir (see Fig. 10 for example), the nozzle array comprising a plurality of nozzles capable of receiving the compound (see ¶ 0053-0054 for example);
a substrate (e.g., 11, 55) positioned to capable of receiving the compound from the nozzle array (see ¶ 0053-0054 for example), the substrate having one or more deposition regions (e.g., 30, 11a-11c, 54a-54b) capable for deposition of the compound on the substrate (see ¶ 0045 for example), wherein the deposition regions are a plurality of confined regions formed in the substrate (see Figs. 9, 13, 17-20 & ¶ 0060 for example); and
a positioner (e.g., robotic arm 12) capable of displacing at least one of the nozzle array or the substrate relative to the other (see ¶ 0045-0046, 0074+ for example).
further comprising an adaptor interface (e.g., pick-up shaft 23) capable of connecting the compound from the compound reservoir to the nozzle array, the nozzle array being removably mounted to the adaptor interface (see ¶ 0046, 0052 for example).
wherein the nozzle array comprises a readable indicator (e.g., bar code; Claim 58), and further comprising a controller (e.g., computer).
further comprising a characterization attachment (¶ 0076).
wherein the substrate comprises a well, a post, a microwell plate, a dish, an artificial scaffold, or a natural scaffold (see Fig. 1 for example).
wherein the deposition regions are a plurality of confined regions formed in the substrate (see Figs. 9, 13, 17-20 & ¶ 0060 for example).
wherein the adaptor interface is capable of receiving a plurality of different nozzle arrays (see ¶ 0046, 0052 for example).
wherein the substrate comprises a readable indicator (¶ 0064+).
wherein the characterization attachment is a microscope or a micro spectroscopy module (¶ 0076).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the device of Shalev et al. with barcode, as taught by Coassin et al. for identification (Coassin et al. Claim 58).
With regard to limitations in claims 33, 36, 39, 52, 57, 58, 59, 66 (e.g., “[...] optionally a temperature probe and/or a mounting plate and tip holder to maintain the module in proper position for control of the module; [...] to hold a compound vapor [...] to receive [...] for deposition [...]”, “identifying a nozzle type for the nozzle array, [...]”, “[...] identifying the one or more depositions regions and/or the desired deposition protocol”, etc.), these claim limitations are considered process or intended use limitations, which do not further delineate the structure of the claimed apparatus from that of the prior art. The cited prior art teaches all of the positively recited structure of the claimed apparatus. The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)). Furthermore, "[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims." See In re Young, 75 F.2d *>996, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115).
Response to Arguments
Applicant's arguments filed 10/02/2025 have been fully considered but they are not persuasive. Applicant’s amendments have been considered and have been addressed within the above art rejection(s).
Applicant’s arguments with respect to 35 USC § 102 rejections as being anticipated by Coassin et al. (US 2002/0182117) are moot because the rejections have been withdrawn.
In response to the Applicant's argument that Shalev et al. fail to teach or disclose “a vapor jetting module coupled to a compound reservoir, which is coupled to a plurality of nozzles, as recited in instant claim 33”, Examiner disagrees.
Shalev et al. teach, among other things: a vapor jetting module comprising a source of a compound (e.g., first source 164, second source 174), heaters (e.g., 166, 176) capable of vaporizing the compound (see i.e., heating the first source 164 to sublimate or evaporate the first low molecular weight organic compound 200 so that it is in a vapor form [...] heating the second source 174 to sublimate or evaporate the second low molecular weight organic compound 202 so that it is a vapor form ¶ 0069), a carrier gas inlet (see i.e., an inlet 112 in which an inert carrier gas stream 120 enters ¶ 0060; first inert carrier gas stream 182 enters the first cylindrical reactor 162, while a second inert carrier gas stream 192 enters the second cylindrical reactor 172. ¶ 0069) and flow channel (see i.e., channels of 162/172 in Fig. 1b); a compound reservoir (e.g., 162, 172, 210) coupled to the vapor jetting module (see ¶ 0021, 0069-0072 & Figs. 1b-1d for example); a nozzle array (e.g., multiple nozzles, 168, 178, 216) coupled to the compound reservoir (see Figs. 1b-1d & ¶ 0069, 0072-0073+ for example), the nozzle array comprising a plurality of nozzles (e.g., multiple nozzles, 168, 178, 216, see ¶ 0069, 0072-0073+ for example).
Applicant is encouraged to amend the claims to include additional structural elements of the testing station. Applicant is thanked for their thoughtful amendments to the claims.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, CHARLES CAPOZZI can be reached at (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798