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 .
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 6/4/25 is acknowledged.
Claims 23-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim.
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 1-5, 8, 11-14, 17-19 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.
Regarding claim 1, it is unclear what applicant means by: “selectively actuating the electro-wetting electrodes to…” What does applicant mean by “selectively” actuating…? How exactly does the claimed process allow the actuated electrodes to: cause first and second droplets in a fluid medium in the fluid chamber of the EWOD device to contact each other to form a droplet interface bilayer, the first droplet containing fluid of a first composition including a first solute species and the second droplet containing fluid of a second composition different to the first composition; and maintain the first and second droplets contacting each other to maintain the droplet interface bilayer and thereby allow the first solute species to pass from the first droplet to the second droplet via the droplet interface bilayer; and cause the first droplet to separate from the second droplet?
The “selectively… to cause…” clause merely recites applicant's intended purpose of the claimed process. Mere statement of purpose can be resolved only on review of the entirety of the specification to gain an understanding of what the inventors actually invented and intended to encompass by the claim.
It is unclear how selective the actuations have to be or how may actuations there needs to be to allow the electrodes to: cause first and second droplets in a fluid medium in the fluid chamber of the EWOD device to contact each other to form a droplet interface bilayer, the first droplet containing fluid of a first composition including a first solute species and the second droplet containing fluid of a second composition different to the first composition; and maintain the first and second droplets contacting each other to maintain the droplet interface bilayer and thereby allow the first solute species to pass from the first droplet to the second droplet via the droplet interface bilayer; and cause the first droplet to separate from the second droplet. The claim is replete with applicant’s intended results without providing actual process steps.
The same rationale applies to claims 12, 13, 18, 19 and 22.
The examiner is not stating that the claim can be interpreted in many ways; nor equating the breath of the claim with indefiniteness. The examiner is stating that the determination for the scope of the claim can be resolved only on review of the entirety of the record. The examiner notes that claim 11 does not cure the above deficiencies.
The examiner also recommends applicant to use consistent terminologies throughout the claims. For instance: the limitation: “the electro-wetting electrodes” in line 5 appears to refer back to the plurality of the electro-wetting electrodes recited in the preamble. Same applies to claim 4 and etc.
Claim 2 is unclear. Claim 1 recite that the second composition is different from the first composition. Claim 2 recites: a transporter species… is provided in the first droplet and/or in the second droplet. Clarification is requested.
Similar rationale applies to claim 8. Which of the solute is being referenced by the limitation: the solute. Claim 1 recites that “a first solute species” is in the first composition in the first droplet. Claim 1 does not recite that the second composition includes a second solute or second solute species. Applicant may take the position that claim 1 imply that the second composition inherently includes a second solute. However, implication(s) is/are not a standard for what is covered by the scope of the claim. Thus, regarding claim 8, it is unclear what applicant means by: the solute in one or both of the first and second droplets.
Regarding claim 3, it is unclear what applicant means by: “the transporter species is arranged.” What does applicant mean by a transporter species (molecules) is arranged. What does applicant mean by: when incorporated into the droplet interface bilayer, to block transfer via the droplet interface bilayer of the second solute species.
Claim 4 is unclear. What does applicant mean by: a method as claimed in claim 1 and comprising actuating… Is applicant attempting to further define the step of selectively actuating; this is additional steps to the process claimed in claim 1; or applicant means something else.
Claim 17 is unclear. Claims 1 or 17 does not recite a second solute species. What does applicant mean by the “third” solute species.
Furthermore, the recitation "a second composition" renders the claim unclear, because it is not clear if it is referencing the second composition recited in claim 1 or applicant means some other composition merely being identically labeled. What composition is being referenced by the recitation?
The examiner omits raising similar formality issues throughout the claims.
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.
Claims 1-5, 8, 11-14, 17-19 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki (EP 2047266) in view of Thiam (US 20180356430).
Regarding claims 1-5, 8, 11-14, 17-19 and 22, as best understood, Suzuki discloses a method for moving droplets away and towards each other in order to form a bilayer border membrane (Figs 1-3; [0056]). The droplets contain solutes in different concentrations ([0067]). The droplets are brough to contact and the solutes in the droplets are transferred/exchanged ([0021]; [0067]). As to claims 2 and 3, Suzuki also teaches: transporter species to be open or blocked (fig. 3(3) and [0031]).
As to claim 5, Suzuki teaches (throughout the reference) the importance of choosing diameter of droplets depending on what is being transferred, etc. Suzuki teaches: “The change in the area of the bilayers may be observed visually or by capacitance measurements. It has been demonstrated that it is possible to change the diameter of the bilayer over the range from 30μm to 1000μm, although this is not thought to be the limit” ([0028]).
As to claim 6, Suzuki teaches: “The nature and concentration of the solutes can be freely varied to vary the properties of the solution. One important property is pH and this can be varied over a wide range. Another important point in experiments using electrical measurements is to select appropriate salts to carry the current” (0036]). Providing a sensing device is inherent or at least obvious.
Suzuki does not explicitly disclose that an EWOD device is used to perform the droplet manipulation. However, Suzuki teaches use microfluidic equipment or electrical patterned equipment ([0059)). EWOD devices are a type of electrical patterned microfluid equipment. Furthermore, the examiner respectfully asserts that all EWOD devices, by definition (See references cited in the PTOL-892 Some are applicant’s own EWOD related references), include two substrates (sandwiched) defining a fluid chamber therebetween and a plurality of electro-wetting electrodes. It would have been obvious to a skilled artisan to use and EWOD device, which is a well know fluid droplets manipulation device. As currently presented claims 1 or 22 does not specify any specific structural nature of the EWOD device being used. None of the claims actually claimed any specific step by step process of using the EWOD device.
Modified Suzuki does not explicitly disclose: the first droplet containing fluid of a first composition including a first solute species and the second droplet containing fluid of a second composition different to the first composition, the method allowing the first solute species to pass from the first droplet to the second droplet via the droplet interface bilayer. Therefore, the differentiating element is the transfer of solute from the first droplet to the second droplet.
Thiam discloses the transfer of solutes between two droplets separated by a bilayer of amphiphilic molecules ([0030]; [0031]). Fig. 2(B) depicts the transfer of ions, thus of solute, between the droplets.
All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results to one of ordinary skill in the art at the time of the invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHOGO SASAKI whose telephone number is (571)270-7071. The examiner can normally be reached Monday-Thursday 10:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at 5712707698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SHOGO . SASAKI
Primary Examiner
Art Unit 1798
/SHOGO SASAKI/Primary Examiner, Art Unit 1758 10/29/25