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 .
DETAILED ACTION
Response to Arguments
1. 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).
2. With respect to applicant’s remarks filed on 09/25/25 regarding rejected claims on pages 4-8, the examiner respectfully disagrees.
Applicants argues “Sharpe's sample reservoir is not placed above the flow channel so as to achieve a sufficient change in elevation”. This is not correct. Sharpe’s device is using hydrostatic pressure driving sample flow into at least one flow channel, not using an external magnetic field or an external electric field in zeta potential analysis. Sharpe’s figure 1 teaches sheath source 16 is placed above the flow channel, and a portion of sample source 14 is placed above the flow channel. Therefore, gravity causes pressure driving the flow. Figures 10A-D, 11A-D; Column 17, lines 21-32. Gravity causes pressure driving sample flow sheath fluid 352 and drives the sample 354 into the flow channel 318. In the other words, Sharpe has taught that the sample reservoirs 16/14 are placed above the flow channel so as to achieve a sufficient change in elevation.
Further, Sharpe’s figure 9B also discloses both sheath flow inlet and sample flow inlet being above the flow channel 318. In the other words, Sharpe's sample reservoir is placed above the flow channel so as to achieve a sufficient change in elevation.
3. Applicants also argues “Applicant submits that even if one were to erroneously conclude that Sharpe teaches the use of hydrostatic pressure to drive the sample into the flow channel, this still does not read upon the total absence of external forces—such as an electrical or magnetic field—in the whole zeta potential analysis”. This explanation is not acceptable.
First: nowhere in Sharpe’s reference discloses using external forces—such as an electrical or magnetic field for particle motion or transport in suspensions and colloids.
Second: Sharpe teaches sample reservoir being placed above the flow channel so as to achieve a sufficient change in elevation as explained above. Therefore, it is clear that Sharpe’s reference does not need any electrical or magnetic force to drive the particle in suspensions and colloids.
In the other words, the above Applicant’s argument is not correct.
4. Applicants also argues “Sharpe describes “piezoelectric transducers” to facilitate aligning and sorting the sperm therein [column 22, lines 34-44]; detectors generating “waveform pulses” to inspect and characterize that sperm, [column 24, lines 61-67]; and even explains that the electromagnetic radiation source is not intended merely to illuminate the flow channel, but to modify and analyze the particles therein via “fluorescence scattered, or other responsive emission," [column 12, lines 13-17]”. The Examiner would like to point out that Sharpe only teaches using fluorescence scattered and waveform pulses for detectors, and using transducers for alignment and orientation of particle, but not for driving analyzing particle.
Note that: fluorescence scattered and waveform pulses is different from magnetic field and an external electric field. In the other words, Sharpe does not teach employing an external magnetic field or an external electric field in zeta potential analysis.
Moreover, Applicant’s publication (2022/0268731) discloses: “In some embodiments, zeta potentiometers described herein do not employ any external forces in the zeta potential analysis. Prior zeta potentiometers, for example, have employed external electric and/or magnetic fields in the particle analysis. Electro-acoustic forces have also been used in prior zeta potentiometers for particle analysis. As shown herein, the described zeta potentiometers and associated diffusiophoretic methods obviate the need for these external forces in particle analysis” ([0056]).
According to the above paragraph, Applicant only discloses the limitation “do not employ an external force of external magnetic field or an external force of external electric field in zeta potential analysis”. This limitation is different from the limitation “employ an external magnetic field or an external electric field in zeta potential analysis”. In the other words, the limitation “the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis” has not been disclosed in specification.
For the purpose of examination, this limitation is interpreted as the following: “employ an external force of magnetic field or of an external electric field in zeta potential analysis”.
Further, Applicant’s publication (2022/0268731) also teaches using light/waveform/led in zeta potential analysis, ([0012, 0054, 0056]). This is contradicting to the above Applicant’s argument. In the other words, using light/waveform/led in zeta potential analysis is acceptable in zeta potential analysis.
5. New reference of Mavliev (U.S. Pat. No. 10,241,024) discloses limitation “the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis”, (figures 4, 5, pumps 402, 404, particle Monitoring System 100. There is no an external magnetic field or an external electric field).
6. Grounds for the rejection of claims are provided below as necessitated by amendment.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 3-12, 14 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claims 3, 13, no-where in the specification disclosed the following limitations: “the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis.”.
Applicant’s publication (2022/0268731) discloses: “In some embodiments, zeta potentiometers described herein do not employ any external forces in the zeta potential analysis. Prior zeta potentiometers, for example, have employed external electric and/or magnetic fields in the particle analysis. Electro-acoustic forces have also been used in prior zeta potentiometers for particle analysis. As shown herein, the described zeta potentiometers and associated diffusiophoretic methods obviate the need for these external forces in particle analysis” ([0056]). According to the above paragraph, Applicant only discloses the limitation “do not employ an external force of external magnetic field or of external electric field in zeta potential analysis”. This limitation is different from the limitation “employ an external magnetic field or an external electric field in zeta potential analysis”.
In the other words, the limitation “the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis” has not been disclosed in specification.
For the purpose of examination, this limitation is interpreted as the following: “employ an external force of magnetic field or an external electric field in zeta potential analysis”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
9. 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 of this title, 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.
10. Claim(s) 3, 6-7, 9, 10-12, 14, is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharpe et al. (U.S. Pat. No. 9,757,726) in view of Mavliev (U.S. Pat. No. 10,241,024), further in view of JP2006523127, further in view of Avesar (WO 2018150414). Hereafter “Sharpe”, “Mavliev”, “JP2006523127”, “Avesar”. (Please see attached files for reference of JP2006523127 in previous office action).
Regarding Claims 3, Sharpe teaches a zeta potentiometer (figures 1, 3A, 5, 7, 22, are not different from zeta potentiometer) comprising:
at least one flow channel (figure 1, flow channel 18);
at least one light source for illuminating the flow channel (figure 1, radiation source 30, flow channel 18);
an imaging device positioned to observe the illuminated flow channel (figures 1, 22, flow channel 18, detector 56 is not different from an imaging device); and
a sample storage location adapted to provide sample to the at least one flow channel (figure 1, sample storage 14).
Wherein the zeta potentiometer does not employ an external magnetic field in zeta potential analysis (Please see 112(a) rejection in paragraph 8 above). This limitation is interpreted as the following: “the zeta potentiometer does not employ an external force of magnetic field or an external force of external electric field in zeta potential analysis”. Sharpe’s device is using hydrostatic pressure driving sample flow into the at least one flow channel, not using an external force external magnetic field or of external electric field in zeta potential analysis. (Sharpe’s figure 1 teaches sheath source 16 is placed above the flow channel, and a portion of sample source 14 is placed above the flow channel. Therefore, gravity causes pressure driving the flow. Figures 10A-D, 11A-D; Column 17, lines 21-32. Gravity causes pressure driving sample flow sheath fluid 352 and drives the sample 354 into the flow channel 318).
If the specification is amended to overcome the 112(a) issue, the limitation “the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis” is rejected as the following:
However, Sharpe does not teach the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis. Mavliev teaches the zeta potentiometer does not employ an external magnetic field or an external electric field in zeta potential analysis, (figures 4, 5, pumps 402, 404, particle Monitoring System 100. There is no an external magnetic field or an external electric field). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe by not employing an external magnetic field or an external electric field in zeta potential analysis in order to deliver sample with mechanism device (figures 4, 5, pumps 402, 404, particle Monitoring System 100).
Regarding Claim 6, Sharpe teaches the sample storage location resides above the at least one flow channel (figure 1, sample storage 14, flow channel 18).
Regarding Claim(s) 7, Sharpe teaches hydrostatic pressure drives sample flow into the at least one flow channel (column 17, lines 21-28).
Further, as indicated in previous office action, JP2006523127 also teaches hydrostatic pressure drives sample flow into the at least one flow channel (page 9, lines 13-14. BTT Brain Temperature Tunnel is not different from a flow channel). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe by having hydrostatic pressure in order to deliver substance to the BTT location.
Regarding Claim(s) 9, Sharpe teaches at least one flow channel comprises a solute concentration gradient (figure 1, sample inlet 48 and flow channel 18 create a solute concentration gradient).
Regarding Claim(s) 10, Sharpe, Mavliev, Avesar, teach all the limitations of claim 3 as stated above except for pressure measurement ports in fluid communications with the at least one channel. JP2006523127 teaches pressure measurement ports in fluid communications with the at least one channel, (page 11, lines 50-51; Page 12, lines 1-2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe, Mavliev, Avesar by having pressure measurement ports in fluid communications with the at least one channel in order to measure fluid pressure (JP2006523127, page 11, lines 50-51; Page 12, lines 1-2).
Regarding Claim(s) 11, 12, Sharpe teaches at least one flow channel is connected to two main channels, and the two main channels have differing flow rates of solute (figure 1, flow channel 18 is connected to two main channels 22, 24. It is inherent that flow channel 18 and two channel 22, 24, must have differing flow rates of solute).
Further, as indicated in previous office action, Avesar also teaches at least one flow channel is connected to two main channels, and the two main channels have differing flow rates of solute (figure 1, chamber 60 is not different from flow channel, and is connected to two main channels 80, 115, 125; [0057, 0058]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe by having at least one flow channel is connected to two main channels in order to provide fluid efficiently (Avesar, [0057, 0058]).
Regarding Claim(s) 14 Sharpe teaches the zeta potentiometer does not employ external forces in the zeta potential analysis (Sharpe’s device using hydrostatic pressure driving sample flow into the at least one flow channel, not using external forces in the zeta potential analysis, column 17, lines 21-28; figure 1).
11. Claim(s) 4, 5, 8, is/are rejected under 35 U.S.C. 103 as being unpatentable over Sharpe et al. (U.S. Pat. No. 9,757,726), in view of Mavliev (U.S. Pat. No. 10,241,024), further in view of JP2006523127, further in view of Avesar (WO 2018150414), and further in view of Elangovan et al. (U.S. Pub. No. 2017/0328893). Hereafter “Sharpe”, “Mavliev”, “JP2006523127”, “Avesar”, “Elangovan”. (Please see attached files for reference of JP2006523127 in previous office action).
Regarding Claim 4, Sharpe, Mavliev, Avesar, JP2006523127, teach all the limitations of claim 1 as stated above except for the imaging device comprises a microscope. Elangovan teaches imaging device comprises a microscope ([0016], lines 13-15; [0017], lines 1-6). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe, Mavliev, Avesar, JP2006523127, by having a microscope in order to implement inspection system for viewing very small objects.
Regarding Claim 5, Sharpe, Mavliev, Avesar, JP2006523127, teaches all the limitations of claim 1 as stated above except for a light emitting diode. Elangovan teaches the light source comprises a light emitting diode ([0080], lines 14-16). It would have been obvious to one having ordinary skill in the art before the effective filing date of the invention was made to modify Sharpe, Mavliev, Avesar, JP2006523127, by having a light emitting diode in order to implement inspection system with compact size and high efficiency.
Regarding Claim 8, Sharpe, Mavliev, Avesar, JP2006523127, teaches the sample storage location defines an area (figure 1, sample reservoir 106-1 defines an area). However, Sharpe, Mavliev, Avesar, JP2006523127, does not teach area of 100µm. The selection of 100µm or similar range is well known. It would have been obvious to one having ordinary skill in the art at the time of the invention was made to choose appropriate area for the benefit of well operated for the system. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
12. 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 extension fee 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 date of this final action.
Fax/Telephone Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRI T TON whose telephone number is (571)272-9064. The examiner can normally be reached on 8am-4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michelle Iacoletti can be reached on (571)270-5789. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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December 15, 2025
/Tri T Ton/
Primary Examiner Art Unit 2877