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 1 comprising claims 1 – 29 in the reply filed on 2/4/2026 is acknowledged.
Claims 30 – 44 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 2/4/2026.
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 – 29 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 claims 1, 9, 13 and 23, these claims recite “a microchannel region for transporting a microchannel of a fluid.” The meaning of this language is not clear and is therefore considered to be indefinite. It is unclear as to how a microchannel of a fluid is transported. Is the fluid transported through a microchannel region of the microchannel?
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 2, 6, 8, 13 – 18, 23 – 25, 28 and 29 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”).
Regarding claim 1, Fritsch teaches a microfluidic device (figure 3; paragraphs 66 – 105) comprising:
a bottom electrode (electrode 56);
a dielectric layer (insulating layer 60; paragraph 108) on the bottom electrode 56; and
one or more top electrodes (electrode 58; paragraph 106) on a region of the dielectric layer 60, wherein each of the one or more top electrodes 58 has a sidewall that forms a sidewall angle with an outer surface of the dielectric layer 60 that is less than about 180 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
, and
wherein the sidewall of each of the one or more top electrodes 58 and a portion of the outer surface of the dielectric layer 60 adjacent to the sidewall define a microchannel region (microchannel 62) capable of transporting a fluid within the microchannel (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
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Regarding claim 2, Fritsch teaches the microfluidic device of claim 1, wherein the sidewall angle is between about 70 degrees and about 90 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Regarding claim 6, Fritsch teaches the microfluidic device of claim 1, further comprising a fluidic reservoir (e.g., upper reservoir 32 or lower reservoir 34; figure 2; paragraph 2) fluidically coupled to the microchannel region of each of the one or more top electrodes.
Regarding claim 8, Fritsch teaches the microfluidic device of claim 1, further comprising a first end electrode at a first end of the microchannel region and second end electrode at a second end of the microchannel region (e.g., electrodes 220, 232, 234 and 222, can be positioned different ends of a microchannel; paragraph 138; figure 12).
Regarding claim 13, Fritsch teaches a method (figure 3; paragraphs 66 – 116) comprising:
depositing a dielectric layer (insulating layer 60; paragraph 108) on a bottom electrode (electrode 56); and
depositing a top conductive layer on one or more regions of the dielectric layer to form one or more top electrodes (depositing gold electrodes 58 and 56; paragraphs 106 and 116),
wherein each of the one or more top electrodes has a sidewall that forms a sidewall angle with an outer surface of the dielectric layer that is less than about 180 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62), and
wherein the sidewall of each of the one or more top electrodes 58 and a portion of the outer surface of the dielectric layer 60 adjacent to the sidewall define a microchannel region (microchannel 62) capable of transporting a fluid within the microchannel (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Regarding claim 14, Fritsch teaches the method of claim 13, further comprising depositing a bottom conductive layer on a substrate to form the bottom electrode (depositing gold electrodes 58 and 56; paragraphs 106 and 116)
Regarding claim 15, Fritsch teaches the method of claim 13, further comprising: depositing, after depositing the dielectric layer (insulating layer 60; paragraph 108) and before depositing the top conductive layer (depositing gold electrodes 58 and 56; paragraphs 106, 116 and 130), a pattern layer (paragraph 130) on another region of the dielectric layer, different from the one or more region of the dielectric layer on which the top conductive layer is deposited; and removing, after depositing the top conductive layer, the pattern layer (paragraph 130).
Regarding claim 16, Fritsch teaches the method of claim 15, wherein the pattern layer is a photoresist layer (paragraphs 71, 79 and 83).
Regarding claim 17, Fritsch teaches the method of claim 13, wherein the dielectric layer is deposited using atomic layer deposition (paragraph 106).
Regarding claim 18, Fritsch teaches the method of claim 13, wherein the sidewall angle is between about 70 degrees and about 90 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Regarding claim 23, Fritsch teaches a method for manipulating a fluid (figure 3; paragraphs 66 – 105 and 138 – 145) comprising:
generating, by a microfluidic device, an electric field in a microchannel region in response to receiving a voltage, wherein the microfluidic device comprises:
a bottom electrode (electrode 56);
a dielectric layer (insulating layer 60; paragraph 108) on the bottom electrode 56; and
one or more top electrodes (electrode 58; paragraph 106) on a region of the dielectric layer 60,
wherein each of the one or more top electrodes58 has a sidewall that forms a sidewall angle with an outer surface of the dielectric layer 60 that is less than about 180 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62),
wherein the sidewall of each of the one or more top electrodes 58 and a portion of the outer surface of the dielectric layer 60 adjacent to the sidewall define a microchannel region (microchannel 62) capable of transporting a fluid within the microchannel (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Regarding claim 24, Fritsch teaches the method of claim 23, wherein an outer surface of the microchannel forms a contact angle with the outer surface of the dielectric layer that is greater than about 50 degrees (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Regarding claim 25, Fritsch teaches the method of claim 23, wherein the microchannel has a width less than about 5 micrometers (paragraph 5; claims 7 and 13).
Regarding claim 28, Fritsch teaches the method of claim 23, wherein the received voltage is less than 5 volts (paragraphs 14 and 47; claim 15).
Regarding claim 29, Fritsch teaches the method of claim 23, wherein the microfluidic device further comprises a first end electrode at a first end of the microchannel region and second end electrode at a second end of the microchannel region (e.g., electrodes 220, 232, 234 and 222, can be positioned different ends of a microchannel; paragraph 138; figure 12), and wherein the method further comprises receiving, by the microfluidic device, a voltage potential between the first end electrode and the second end electrode (paragraphs 14 and 47; claim 15).
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) 3 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”) and Ronaghi et al. (US 2009/0032401 A1; hereinafter “Ronaghi”).
Regarding claim 3, Fritsch does not specifically teach the microfluidic device of claim 1, wherein the dielectric layer has a thickness less than about 50 nanometers in the region of the dielectric layer between the bottom electrode and each of the one or more top electrodes.
Regarding claim 19, Fritsch does not specifically teach the method of claim 13, wherein the dielectric layer has a thickness less than about 50 nanometers in a region of the dielectric layer between the bottom electrode and each of the one or more top electrodes.
However, Ronaghi teaches a related apparatus comprising a 10 nm thick dielectric layer (paragraph 50). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide wherein the dielectric layer has a thickness less than about 50 nanometers in the region of the dielectric layer between the bottom electrode and each of the one or more top electrodes.
Claim(s) 4, 5, 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”).
Regarding claim 4, Fritsch does not specifically teach the microfluidic device of claim 1, wherein each of the one or more top electrodes has a thickness less than about five micrometers.
Regarding claim 20, Fritsch does not specifically teach the method of claim 13, wherein each of the one or more top electrodes has a thickness less than about five micrometers.
However, Fritsch does teach that the screen print which forms the electrode layer is 12 µm (paragraph 116). Consequently, as evidenced by Fritsch, absent any further evidence or unexpected results, the electrode layer thickness is considered to be a known-result effective variable whose optimum specification for a particular application would have been within the ambit of a person of ordinary skill in the art without undue experimentation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Furthermore, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide wherein each of the one or more top electrodes has a thickness less than about five micrometers.
Regarding claim 5, Fritsch does not specifically teach the microfluidic device of claim 1, wherein each of the one or more top electrodes is separated from another of the one or more top electrodes by less than about 10 micrometers.
Regarding claim 21, Fritsch does not specifically teach the method of claim 13, wherein each of the one or more top electrodes is separated from another of the one or more top electrodes by less than about 10 micrometers.
However, Fritsch does teach that the electrodes 56 and 58 are separated by a PDMS insulating layer. This layer may be as thin or as thick as desired. The only limit is that this layer must be thick enough to prevent shorting between electrodes 58 and 56 (paragraph 108). Consequently, as evidenced by Fritsch, absent any further evidence or unexpected results, the separation layer thickness is considered to be a known-result effective variable whose optimum specification for a particular application would have been within the ambit of a person of ordinary skill in the art without undue experimentation. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” See In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). The discovery of an optimum value of a known result effective variable, without producing any new or unexpected results, is within the ambit of a person of ordinary skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980) (see MPEP § 2144.05, II.). Furthermore, the combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide wherein each of the one or more top electrodes is separated from another of the one or more top electrodes by less than about 10 micrometers.
Claim(s) 7 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”) and Ticknor et al. (US 2003/0012483 A1; hereinafter “Ticknor”).
Regarding claim 7, Fritsch does not specifically teach the microfluidic device of claim 1, further comprising a passivation layer on the one or more top electrodes.
Regarding claim 22, Fritsch does not specifically teach the method of claim 13, further comprising depositing a passivation layer on the one or more top electrodes.
However, Ticknor teaches a related apparatus comprising a passivation layer on the electrodes of the device (paragraphs 59 and 132). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide a passivation layer on the one or more top electrodes.
Claim(s) 9 – 11 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”) and Sun (US 2021/0322977 A1; hereinafter “Sun”).
Regarding claim 9, Fritsch teaches a microfluidic system (figure 3; paragraphs 66 – 105) comprising:
a microchip comprising:
a bottom electrode (electrode 56);
a dielectric layer (insulating layer 60; paragraph 108) on the bottom electrode 56; and
one or more top electrodes (electrode 58; paragraph 106) on a region of the dielectric layer 60;
wherein each of the one or more top electrodes has a sidewall that forms a sidewall angle with an outer surface of the dielectric layer that is less than about 180 degrees, and
wherein the sidewall of each of the one or more top electrodes58 and a portion of the outer surface of the dielectric layer 60 adjacent to the sidewall define a microchannel region (microchannel 62) capable of transporting a fluid through the microchannel 62 (the lower surface of this layer (sidewall) is at 90 degrees from the outer surface (leftmost side of the rightmost layer 60) and these define the microchannel 62).
Fritsch does not specifically teach an inductor electrically coupled to at least one of the bottom electrode or the one or more top electrodes.
Regarding claim 26, Fritsch does not specifically teach the method of claim 23, wherein the microfluidic device further comprises an inductor, and wherein the microfluidic device receives an induced voltage.
However, Sun teaches a microfluidic device having electrodes coupled with an inductor structure to facilitate effective electrical power and control of the electrodes of the microfluidic device (e.g., paragraphs 10, 12, 49, 84 and 87; claims 1, 2 and 14). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide an inductor electrically coupled to at least one of the bottom electrode or the one or more top electrodes. Furthermore, with the incorporation of an inductor as taught by Sun, it implicit that the microfluidic device would be capable of receiving an induced voltage during operation.
Regarding claim 10, Fritsch teaches the microfluidic system of claim 9, wherein the inductor is configured to generate an electric field between the bottom electrode and the one or more top electrodes in response to receiving an induced voltage (since the prior art teaches the same electrode and inductor structural configuration as claimed, it is presumed to be capable of functioning in the same manner). When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. The Courts have held that it is well settled that where there is a reason to believe that a functional characteristic would be inherent in the prior art, the burden of proof then shifts to the applicant to provide objective evidence to the contrary. See In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1478, 44 USPQ2d at 1432 (Fed. Cir. 1997) (see MPEP § 2112.01, I.).
Regarding claim 11, Fritsch teaches the microfluidic system of claim 10, wherein the induced voltage is less than 5 volts (as indicated above for the rejection of claim 10, since the prior art teaches the same electrode and inductor structural configuration as claimed, it is presumed to be capable of functioning in the same manner).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”) and Sun (US 2021/0322977 A1; hereinafter “Sun”), and further in view of Quellet et al. (US 2015/0253267 A1; hereinafter “Quellet”).
Regarding claim 12, modified Fritsch does not specifically teach the microfluidic system of claim 9, further comprising a resonant tank circuit comprising the inductor, wherein the resonant tank circuit is electrically coupled to the bottom electrode and the one or more top electrodes.
However, Quellet teaches the use of a resonant tank circuit comprising an inductor for generating current for an electrode configuration for an analyzer apparatus (e.g., paragraphs 49 – 52). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide a resonant tank circuit comprising the inductor, wherein the resonant tank circuit is electrically coupled to the bottom electrode and the one or more top electrodes.
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fritsch et al. (US 2003/0118452 A1; hereinafter “Fritsch”) in view of Lo et al. (US 2014/0061049 A1; hereinafter “Lo”).
Regarding claim 27, Fritsch does not specifically teach the method of claim 26, wherein the microfluidic device receives the induced voltage from a wireless source.
However, wirelessly powering integrated circuits incorporated with microfluidic devices is well known in the art as evidenced by Lo (paragraphs 46, 50 and 60). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). 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 provide wherein the microfluidic device receives the induced voltage from a wireless source.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chang et al. (US 2015/0174574 A1) teach systems and methods for an integrated bio-entity manipulation and processing device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth A Robinson can be reached at (571) 272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796