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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 23 March 2026 has been entered.
Response to Amendment
The amendment filed 23 March 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: “the at least one containment boundary forming a closed perimeter” in claim 1, “wherein the at least one containment boundary allows deformation of a free surface of the top portion laterally beyond the containment boundary while the fluid droplet spins in response to the acoustic waves generated by the at least one sound wave generator” in claim 28, and “wherein each transducer of the pair of opposed interdigitated transducers is disposed along a common axis with the at least one containment boundary” in claim 29.
Applicant is required to cancel the new matter in the reply to this Office Action.
Response to Arguments
Applicant's arguments filed 23 March 2026 have been fully considered but they are not persuasive. Applicant’s arguments regarding claim 1 have been considered, but are ultimately considered moot as they pertain to a newly added limitation which is not supported by the original disclosure, namely “the containment boundary forming a closed perimeter”. This also applies to Applicant’s argument regarding newly added claims 28-29 and the respective limitations.
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 1-6, 8, and 28-29 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. Specifically, the problematic subject matter is the newly added limitation claiming, “the at least one containment boundary forming a closed perimeter” in claim 1. Claims 2-6, 8 and 28-29 fail to comply with the written description requirement by virtue of their dependence on claim 1. Further, the limitations claiming “wherein the at least one containment boundary allows deformation of a free surface of the top portion laterally beyond the containment boundary while the fluid droplet spins in response to the acoustic waves generated by the at least one sound wave generator” in claim 28 do not comply with the written description requirement. In claim 29, the limitation claiming “wherein each transducer of the pair of opposed interdigitated transducers is disposed along a common axis with the at least one containment boundary”.
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.
Claims 1-3, 6, 8, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al. (US 9410873 B2), hereinafter “Wilson”, in view of Ahmed et al. (US-20140146634-A1), hereinafter “Ahmed”.
Regarding Claim 1, Wilson discloses an acoustofluidic centrifuge system (an on-chip centrifuge; see Col. 33 Line 43-45), comprising: a substrate (The substrate; see Col. 14 Line 30), at least one sound wave generator (A transducer electrode structure… provides SAWs; see e.g. Abstract) disposed on the substrate (lithium niobate substrate which comprises an IDT; see Col. 23 Lines 3-4)); and at least one containment boundary configured to encapsulate at least a portion of a fluid droplet (“passive encapsulation surface”; see e.g. Col. 15 Lines 1-2; and “fluid sample pinning zone… for pinning a fluid sample droplet”; see Col. 17 Lines 41-45), wherein the sound wave generator is configured to generate acoustic waves that propagate towards the at least one containment boundary to cause the at least a portion of a fluid droplet encapsulated therein to spin along a central axis (surface acoustic waves are provided to the substrate surface contacting a droplet such that rotational streaming is induced in the fluid sample droplet; see Col. 18 Lines 44-46) and deform (acoustic energy overcomes the surface tension pinning the drop to the surface so that it spreads out in a liquid film and gives rise to capillary resonance waves; see Col. 32 Lines 16-19) in conjunction with sustained spinning (surface acoustic waves are provided to the substrate surface contacting a droplet such that rotational streaming is induced in the fluid sample droplet; see Col. 18 Lines 44-46).
Wilson does not explicitly teach the containment boundary being a separate structure. However, Ahmed discloses a containment boundary that is a separate structure than the substrate (“a horse-shoe structure (HSS) serving as the support structure 2 is located inside the microfluidic channel 3, optionally constructed from PDMS. The HSS uses surface tension to trap and support a single bubble”; see [0063]; and “microchannel being supported by a substrate”; see Claim 5), and is configured to encapsulate at least a portion of a fluid droplet (bubble trapped in the support structure; see [0011]), and having a top surface that is raised above the substrate (see Fig. 5A Parts 12A and 12B).
Wilson and Ahmed are both considered to be analogous to the claimed invention because they are in the same field of acoustofluidic devices for nanofluidic manipulation/separation. Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Wilson by incorporating the teachings of Ahmed and including a containment boundary that is a separate structure than the substrate. Doing so would help determine the size of the bubble or fluid droplet; see Ahmed [0063]).
Regarding Claim 2, Wilson and Ahmed together disclose the system of claim 1. Wilson further discloses wherein the at least one sound wave generator comprises at least one interdigitated transducer (the transducer electrode structure has an arrangement of interdigitated electrodes; see e.g. Col. 10 Lines 18-19).
Regarding Claim 3, Wilson and Ahmed together disclose the system of claim 2. Wilson further discloses wherein the at least one interdigitated transducer is slanted (slanted interdigitated arrangement of electrodes… can be used for the transducer; see e.g. Col. 10 Lines 22-29).
Regarding Claim 6, Wilson and Ahmed together disclose the system of claim 1. Wilson further discloses wherein the at least one containment boundary comprises a circular ring (see e.g. Col. 17 Lines 43-46 and Col. 18 Lines 12-13). Wilson specifically teaches that the “perimeter of the pinning zone may delineate a fluid sample pinning line”, indicating that the perimeter acts as a boundary, and “the fluid sample pinning zone preferably has a width or diameter…”, indicating that the pinning zone can have a diameter, and therefore a circular shape. Together, these two specifications indicate the pinning zone taking the shape of a circular ring.
Regarding Claim 8, Wilson and Ahmed together disclose the system of claim 1. Wilson further discloses wherein the at least one containment boundary comprises two containment boundaries, the two containment boundaries being in communication with each other by way of a channel disposed therebetween (see e.g. Col. 15 Lines 4-7, and Col. 17 Lines 41-45). Wilson discloses manipulation surfaces on each side of a channel (Col. 15 Lines 7-4), then goes on to teach a pinning zone, or containment boundary, on a manipulation surface. Because Wilson discloses at least two manipulation surfaces, it logically follows that there are at least two pinning zones. Wilson also discloses that “Providing the channel with manipulation surfaces on opposing sides increases control over the manipulation of the fluid in the channel”, further exemplifying communication between the manipulation surfaces and the channel, and therefore the containment boundaries and the channel.
Wilson does not explicitly teach the containment boundary being a separate structure. However, Ahmed discloses containment boundaries, each of the containment boundaries being attached to the substrate (“a horse-shoe structure (HSS) serving as the support structure 2 is located inside the microfluidic channel 3, optionally constructed from PDMS. The HSS uses surface tension to trap and support a single bubble”; see [0063]; and “microchannel being supported by a substrate”; see Claim 5), and each of the containment boundaries having a top surface that is raised above the substrate (see Fig. 5A Parts 12A and 12B).
Regarding Claim 28, Wilson and Ahmed together disclose the system of claim 1. Wilson further discloses wherein the at least one containment boundary is configured to encapsulate a bottom portion of the fluid droplet such that a top portion of the fluid droplet extends above the top surface of the containment boundary (fluid sample pinning zone is provided in the form of a spot… preferably, the fluid sample pinning zone is a hydrophilic area; see Col. 17 Lines 43-50). It is clear by this disclosure that the containment boundary of Wilson does not extend beyond the surface and is flush with the surface, thereby encapsulating only the bottom portion of the fluid droplet that is in physical contact with the surface.
Claims 4-5 and 29 are rejected under 35 U.S.C. 103 as being unpatentable over Wilson et al. (US-9410873-B2), hereinafter “Wilson”, in view of Ahmed et al. (US-20140146634-A1), hereinafter “Ahmed”, and Heba (WO-2020210868-A1).
Regarding Claim 4, Wilson and Ahmed together disclose the system of claim 2. Wilson further discloses wherein the at least one interdigitated transducer comprises a pair of opposed interdigitated transducers (an array of IDT’s; see e.g. Col. 27 Lines 50-51).
Wilson does not explicitly teach disposing the IDTs on opposite sides of at least one containment boundary. However, Heba discloses opposed interdigitated transducers, each transducer being disposed on opposite sides of the containment boundary (two opposing IDTs off-centre relative to a centre axis which is aligned with a working surface designed to accommodate a liquid; see Page 8 Lines 23-25).
Wilson and Heba are both considered to be analogous to the claimed invention because they are in the same field of surface acoustic wave propagation. Therefore, it would have been obvious to someone of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified Wilson by incorporating the teachings of Heba and disposing the pair of IDTs on opposite sides of the containment boundary or working surface. Doing so would generate asymmetric SAWs (see Heba Page 18 Lines 3-5).
Additionally, KSR Rationale D (see MPEP 2141) states that it is obvious to apply a “known technique to a known device (method, or product) ready for improvement to yield predictable results”. Therefore, it would have been obvious and routine experimentation to a person of ordinary skill in the art prior to the effective filing date of the instant invention to apply the rearrangement of the IDTs to optimize the sound wave propagation to arrive at the desired results.
Regarding Claim 5, Wilson, Ahmed, and Heba together disclose the system of claim 4. Wilson further discloses the pair of interdigitated transducers being slanted (By slanting the electrodes… This arrangement can be modelled by an array of IDT’s; see Col. 27 Lines 48-49).
Regarding Claim 29, the limitations of this claim do not exceed those of claims 1 and 4. Please refer to the rejections of claims 1 and 4 as the claim 29 rejection follows the same rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA LEE KUYKENDALL whose telephone number is (571)270-3806. The examiner can normally be reached Monday- Friday 9:00am-5:00pm.
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/A.L.K./Examiner, Art Unit 1774
/CLAIRE X WANG/Supervisory Patent Examiner, Art Unit 1774
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