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 .
Election/Restrictions
Applicant’s election of Group III, claims 21-22, in the reply filed on October 22nd, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 21 and 22 are under examination. Claims 1-20 are withdrawn from consideration.
Request for Information under 37 CFR 1.105
No IDS was filed for this application. The applicant and/or the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application (see MPEP §§ 704.10 - 704.13). In response to this requirement, please provide a copy of any related and pertinent information, such as non-patent literature, published application(s) or patent(s) (U.S. or foreign), that was used to assist in the drafting of this application. The applicant is reminded of the duty to disclose information that is material to patentability (see 37 CFR § 1.56). A complete reply to the instant Office action must include a complete reply to this requirement. The time period for reply to this requirement coincides with the time period for reply to the instant Office action.
Claim Rejections - 35 USC § 112
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 21 and 22 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.
The metes and bounds of the methodology sought are indefinitely defined as it is unclear what active step(s) are involved in the recited “performing the OEP…” in which such recitation amounts to a general, narrative discussion to a categorical field of “optoelectronic positioning” without setting forth the delineated, active steps of the sought methodology that amounts to the “optoelectronic positioning” claimed herein.
Further, the metes and bounds of the sought methodology are indefinitely defined as the recitations provide “use” claims that are indefinitely defined.
Independent claim 21 recites “…the device of claim 21 is utilized in order to decrease condensation…” and does not provide to recite any active, positive steps delimiting how this use is actually practiced.
See also MPEP 2173.05 (q).
It is also noted that it is unclear if the device of claim 1 (which is recited with respect to a “use” recitation as discussed, and wherein claim 1 is withdrawn from consideration) is drawn to a positive element of the methodology or drawn to a prospective inclusion/workpiece. If Applicant desires the structure of the device of claim 1 as a positive provision to the method of claim 21, Applicant should positively provide an active step of “providing” or likewise step that actively introduces the structure of the sought device (and not by inferential reference to “claim 1” and within a “use recitation).
For purposes of examination, “the device of claim 1” is treated as a prospective inclusion/workpiece.
Further, the metes and bounds of what temperature the “performing the OEP” is carried out at as a dew point is defined by the air temperature and the relative humidity, wherein both of the air temperature and relative humidity are undefined variables herein coincident with the OEP positioning methodology (neither a value or range thereof are given for either so that a coincident dew point/dew point range may be ascertained).
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) 21, as best understood, is/are rejected under 35 U.S.C. 102a1 as being anticipated by Garcia et al. (US 2012/0118740), hereafter Garcia,
With regard to claim 21, Garcia discloses a method for improving the viability of cell which is to be subjected to OEP positioning comprising performing the OEP at a temperature below dew point such that the cell can be visualized while being loaded in as much as understood and recited herein (pars.[0007,0062,0063,0136], figs. 2-8, for example; wherein the “performing the OEP at a temperature…” is given by the applied OET-DEP, and wherein the sperm sorting chip with microfluidic channels therein is placed under an upright microscope to view the live sperm manipulation concordant with the claimed “…such that the cell can be visualized…” and wherein the environment is controlled for temperature and humidity in as much as defined herein in setting forth a coincident temperature below dew point at which the live sperm manipulation is viewable by the upright microscope. Further, “the device of claim 1” is taken as a prospective inclusion/workpiece not afforded patentable weight and its “use” by way of “…is utilized in order to decrease…” is indefinitely defined and herein treated with respect to the aspect of Garcia that provides an OET chip seated to motorized stage of microscope 22 that is controlled with heating or cooling elements to provide suitable temperature conditions for sorting live particulates, and such stage, optical instrumentation, and chip are placed in an environmentally controlled sterile environment with respect to temperature, humidity, etc…(pars.[0062,0063], fig. 2, for example).
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) 22, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Garcia in view of Garcia et al. (“A noninvasive, motility independent, sperm sorting method…The Journal of Urology, Vol. 184, pp. 2466-2472, Dec. 2010), hereafter Garcia-2.
Garcia has been discussed above.
With regard to claim 22, Garcia does not specifically disclose the OEP is performed at a temperature selected from the group consisting those as in cl. 22.
Garcia-2 discloses providing OET-DEP to position and sort sperm cells and for assaying their viability (abstract, page 2467, for example). Garcia-2 discloses that all samples were maintained at room temperature (page 2467, “Materials and Methods” paragraph 2, for example).
It would have been obvious to one of ordinary skill in the art to modify Garcia to carry out the optoelectronic positioning at room temperature, i.e. about 18 to 22 degrees Celsius, such as taught by the analogous art of Garcia-2 to the likewise OET-DEP positioning of sperm cells in order to provide a suitable environment for maintaining the sperm cells as would be appreciated as Garcia is likewise assaying viability of the sperm cells and desires to control the temperature.
Claim(s) 22, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Garcia in view of Chapman et al. (US 2014/0116881), hereafter Chapman.
Garcia has been discussed above.
With regard to claim 22, Garcia does not specifically disclose the OEP is performed at a temperature selected from the group consisting those as in cl. 22.
Chapman discloses pens for biological micro-objects, such as biological cells (abstract). Chapman discloses processing the biological cell, which includes moving the biological cells by OET [optoelectronic tweezer], which is a form of OEP, and provides that the housing can be gas permeable to allow gas, as in ambient air, to enter and exit the chamber to sustain the biological cells (pars.[0032,0037,0042], figs., for example).
It would have been obvious to one of ordinary skill in the art to modify Garcia to carry out the OEP at a temperature coincident with ambient temperature, i.e. about 18 to 22 degrees Celsius, such as suggested by the analogous art of Chapman in OEP positioning of biological cells wherein such temperature provides to sustain the biological cells.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lowe, Jr. et al. (US 2017/0173580) discloses a microfluidic apparatus having an optimized electrowetting surface and related methods therewith including optoelectronic positioning of cells at controlled temperatures that is relevant to Applicant’s invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NEIL N TURK whose telephone number is (571)272-8914. The examiner can normally be reached M-F 930-630.
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/NEIL N TURK/Primary Examiner, Art Unit 1798