DETAILED ACTION
Response to Amendment
This is a final office action in response to a communication filed on November 10, 2025. Claims 1-12 and 14-20 are pending in the application.
Status of Objections and Rejections
The rejection of claim 13 is obviated by Applicant’s cancellation.
All rejections under 35 U.S.C. §102 and 103 from the previous office action are withdrawn in view of Applicant’s amendment.
The rejection of Provisional Nonstatutory Double Patenting Rejection from the previous office action is maintained and not repeated herein because Applicant asserts it will file a terminal disclaimer (Response, p. 12, last section).
New grounds of rejection are necessitated by the amendments.
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.
Claim(s) 14 is/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 pre-AIA the applicant regards as the invention.
Claim 14 is an improper dependent claim because it depends on claim 13 that has been canceled. Thus, claim 14 is an improper dependent claim and will be examined as a dependent claim on claim 1.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims(s) 16 is/are rejected under 35 U.S.C. 102 as being unpatentable over French (US 20190111433).
Regarding claim 16, French teaches a microfluidic chip (Fig. 2; ¶22: EWoD device 200), comprising:
a first substrate (Fig. 2: top substrate) and a second substrate (Fig. 2: bottom substrate) disposed opposite to each other, wherein a microfluidic channel is formed between the first substrate and the second substrate (Fig. 2: the channel between the top and bottom substrates) and configured to accommodate at least one droplet (Fig. 2: droplet 204; ¶22); and
a plurality of drive electrodes (Fig. 5; ¶28: drive electrode 506 in the TFT array) and a plurality of sensing electrodes (Fig. 5; ¶28: sensing electrode 505 in the TFT array) disposed on a side of the first substrate (Fig. 5: Top TFT array in the top substrate), wherein the plurality of drive electrodes are arranged in an array (Fig. 7: an array of drive electrodes), and a projection of each of the plurality of sensing electrodes on a plane where the first substrate is located at least partially overlaps with a projection of a slit between two drive electrodes of the plurality of drive electrodes adjacent to the each of the plurality of sensing electrodes on the plane where the first substrate is located (Fig. 7: an array of drive electrodes);
wherein each of the plurality of sensing electrodes comprises at least one first branch electrode (Fig. 7: the sensing electrode having a horizontal branch electrode in the middle) and at least one second branch electrode (Fig. 7: the sensing electrode having a vertical branch electrode on the left), the at least one first branch electrode extends along a first direction (Fig. 7: horizontal direction), the at least one second branch electrode extends along a second direction (Fig. 7: vertical direction) (Fig. 7: the vertical direction is deemed to be the column direction of the array of drive electrodes), the first direction is parallel to a row direction of the array where the plurality of drive electrodes are arranged (Fig. 7: the horizontal direction is deemed to be the row direction of the array of drive electrodes), and the second direction is parallel to a column direction of the array where the plurality of drive electrodes are arranged (Fig. 7: the vertical direction is deemed to be the column direction of the array of drive electrodes);
wherein the microfluidic chip further comprises a plurality of data signal lines extending along the first direction or the second direction (Fig. 1: the vertical sensor column amplifiers for sensor output signals), wherein each of the plurality of data signal lines is connected to a respective one of the plurality of drive electrodes (Fig. 1: the data signal lines for sensing and scan signal lines for driving are disposed on one side of the drive electrode and the connection to the electrodes within the top substrate would be farther away from the bottom substrate), and
each of the plurality of data signal lines overlaps with and is insulated from the respective one of the plurality of drive electrodes (Fig. 5: indicating the MET1 AC signal line overlaps and is insulated from the drive electrode).
The designation “different drive voltage signals are applied to adjacent ones of the plurality of drive electrodes, to drive the at least one droplet to move; and a detection signal is applied to each of the plurality of sensing electrodes, and a position of the at least one droplet is determined according to a change in capacitance between a sensing electrode of the plurality of sensing electrodes and an electrode corresponding to the sensing electrode when the at least one droplet flows by” is deemed to be functional limitation in apparatus claims. MPEP 2114 (II). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, French in view of Xi teaches all structural limitations of the presently claimed microfluidic chip, and thus it is capable of being applied with different drive voltage signals to adjacent ones of the plurality of drive electrodes to drive the at least one droplet to move; and being applied with a detection signal to each of the plurality of sensing electrodes, and determining a position of the at least one droplet according to a change in capacitance between a sensing electrode of the plurality of sensing electrodes and an electrode corresponding to the sensing electrode when the at least one droplet flows by.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-4, 14, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over French in view of Xi (US 2020/0316590).
Regarding claim 1, French teaches a microfluidic chip (Fig. 2; ¶22: EWoD device 200), comprising:
a first substrate (Fig. 2: top substrate) and a second substrate (Fig. 2: bottom substrate) disposed opposite to each other, wherein a microfluidic channel is formed between the first substrate and the second substrate (Fig. 2: the channel between the top and bottom substrates) and configured to accommodate at least one droplet (Fig. 2: droplet 204; ¶22); and
a plurality of drive electrodes (Fig. 5; ¶28: drive electrode 506 in the TFT array) and a plurality of sensing electrodes (Fig. 5; ¶28: sensing electrode 505 in the TFT array) disposed on a side of the first substrate (Fig. 5: Top TFT array in the top substrate), wherein the plurality of drive electrodes are arranged in an array (Fig. 7: an array of drive electrodes), and a projection of each of the plurality of sensing electrodes on a plane where the first substrate is located at least partially overlaps with a projection of a slit between two drive electrodes of the plurality of drive electrodes adjacent to the each of the plurality of sensing electrodes on the plane where the first substrate is located (Fig. 7: the projection of the sensing electrode overlaps of the projection of the slit between two adjacent drive electrodes);
wherein each of the plurality of sensing electrodes comprises at least one first branch electrode (Fig. 7: the sensing electrode having a horizontal branch electrode in the middle) and at least one second branch electrode (Fig. 7: the sensing electrode having a vertical branch electrode on the left), the at least one first branch electrode extends along a first direction (Fig. 7: horizontal direction), the at least one second branch electrode extends along a second direction (Fig. 7: vertical direction), the first direction is parallel to a row direction of the array where the plurality of drive electrodes are arranged (Fig. 7: the horizontal direction is deemed to be the row direction of the array of drive electrodes), and the second direction is parallel to a column direction of the array where the plurality of drive electrodes are arranged (Fig. 7: the vertical direction is deemed to be the column direction of the array of drive electrodes),
wherein the microfluidic chip further comprises a plurality of scan signal lines extending along the first direction (Fig. 1: the horizontal EWOD row driver), a plurality of data signal lines extending along the second direction (Fig. 1: the vertical sensor column amplifiers for sensor output signals), and a plurality of transistors in a one-to-one correspondence with the plurality of drive electrodes (Fig. 6: switching TFT corresponding to one pair of sensing electrode and drive electrode),
wherein a gate of each of the plurality of transistors is connected to one of the plurality of scan signal lines (Fig. 6: the gate of TFT, i.e., the bottom part of the TFT, connected to the AC signal line for drive electrodes), a first electrode of each of the plurality of transistors is connected to one of the plurality of data signal lines (Fig. 6: the left electrode of the TFT connected to the read-out line to external sensing electronics), and as second electrode f one of the plurality of transistors is connected to a respective one of the plurality of drive electrodes (Fig. 6: the bottom electrode of the TFT, i.e., the gate electrode, connected to the AC signal line for drive electrode and thus connected to the respective drive electrode);
wherein the plurality of transistor are disposed below the plurality of drive electrodes (Fig. 4).
French does not disclose wherein the plurality of transistor overlap with the plurality of drive electrodes or wherein the plurality of scan signal lines overlap with the plurality of drive electrodes and are disposed below the plurality of drive electrodes, and/or the plurality of data signal lines overlap with the plurality of drive electrodes and are disposed below the plurality of drive electrode.
However, Xi teaches a drive technology for a panel (¶2) for microfluidic devices with biology, chemistry, and medicine applications (¶3). For example, Fig. 14 shows a top-view structural scheme of a panel having two drive units 400 (Fig. 14, ¶87). The electrode array layer 300 includes a plurality of drive electrodes 3001 arranged in an array and corresponding to the drive units 400 (Fig. 14; ¶90). The plurality of transistors, T1, T2, and T3, overlap with the plurality of drive electrodes (Fig. 14), and both the scan line groups G and the data line S overlap with the plurality of drive electrodes and disposed below the plurality of drive electrodes (Fig. 14; also see Fig. 15 illustrating the cross-sectional structural scheme).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified French by utilizing the drive circuit as taught by Xi to drive the microfluidic devices of Frenchy because the drive circuit would not need to be configured with a large number of signal channels when the microfluidic device needs a large number of drive electrodes and would be advantages to reduce the computational difficulty of the drive chips and to provide a sufficiently high drive voltage for moving the liquid droplets normally (¶141). Here, the claimed limitations are obvious because 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 yielded nothing more than predictable results. MPEP 2143(I)(A).
The designation “different drive voltage signals are applied to adjacent ones of the plurality of drive electrodes, to drive the at least one droplet to move; and a detection signal is applied to each of the plurality of sensing electrodes, and a position of the at least one droplet is determined according to a change in capacitance between a sensing electrode of the plurality of sensing electrodes and an electrode corresponding to the sensing electrode when the at least one droplet flows by” is deemed to be functional limitation in apparatus claims. MPEP 2114 (II). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, French in view of Xi teaches all structural limitations of the presently claimed microfluidic chip, and thus it is capable of being applied with different drive voltage signals to adjacent ones of the plurality of drive electrodes to drive the at least one droplet to move; and being applied with a detection signal to each of the plurality of sensing electrodes, and determining a position of the at least one droplet according to a change in capacitance between a sensing electrode of the plurality of sensing electrodes and an electrode corresponding to the sensing electrode when the at least one droplet flows by.
Regarding claim 2, French teaches wherein each of the plurality of sensing electrodes comprises one first branch electrode and one second branch electrode, the first branch electrode and the second branch electrode are connected in a shape of a broken line (Fig. 7: the sensing electrode is in a shape with an open end, which is deemed to be a broken line), and the first branch electrode and the second branch electrode are respectively parallel to two adjacent edges of a corresponding one of the plurality of drive electrodes (Fig. 7: the middle branch electrode and the left branch electrode of the sensing electrode are respectively parallel to two adjacent edges of a corresponding drive electrode).
Regarding claim 3, French teaches wherein the plurality of sensing electrodes are in a one-to-one correspondence with the plurality of drive electrodes (Fig. 7).
Regarding claim 4, French teaches wherein a number of the plurality of sensing electrodes is less than a number of the plurality of drive electrodes (the number of the sensing electrodes and drive electrodes depends on the selected area of the array; here the array of the electrodes has an area in which the number of the sensing electrode is less than a number of the drive electrode).
Regarding claim 14, French teaches wherein each of the plurality of scan signal lines, each of the plurality of data signal lines, and each of the plurality of transistors are all disposed on a side of one of the plurality of drive electrodes farther away from the second substrate (Fig. 1: the data signal lines for sensing and scan signal lines for driving are disposed on one side of the drive electrode and the connection to the electrodes within the top substrate would be farther away from the bottom substrate).
Regarding claim 18, French teaches wherein the microfluidic chip further comprising a common electrode disposed on a side of the second substrate (Fig. 2; ¶25: the top electrode 206 is a single conducting layer), wherein the position of the at least one droplet is determined according to a change in capacitance between one of the plurality of sensing electrodes and the common electrode when the at least one droplet flows by (¶6: a second controller is configured to determine a capacitance between at lease of the second plurality of electrodes and a drive electrode; ¶32: using circuits coupled to the top drive and sensing electrodes to provide capacitive sensing, thereby allowing the device to track the position of droplets manipulated by the device).
Further, the designation “wherein the position of the at least one droplet is determined according to a change in capacitance between one of the plurality of sensing electrodes and the common electrode when the at least one droplet flows by” is deemed to be functional limitation in apparatus claims. MPEP 2114 (II). "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). Here, French teaches all structural limitations of the presently claimed microfluidic chip, and thus it is capable of determining the position of the at least one droplet according to a change in capacitance between one of the plurality of sensing electrodes and the common electrode when the at least one droplet flows by.
Regarding claim 19, French and Xi disclose all limitations of claim 1, but fail to teach a distance between two adjacent ones of the plurality of drive electrodes along the first direction is 10 µm to 40 µm; and a distance between two adjacent ones of the plurality of drive electrodes along the second direction is 10 µm to 40 µm.
However, French teaches the sensing and drive electrodes create a coplanar gap cell (Fig. 6; ¶30) and the cell gap is typically in the range 50 to 200 µm (¶22). As shown in Fig. 6, a square shaped pixel including the sensing electrode and driving electrode, the two adjacent drive electrodes in the horizontal direction can be 50 µm and the distance between two adjacent drive electrodes along the vertical direction (i.e., at the same location of the two adjacent drive electrodes) can also be 50 µm, which are close to the claimed ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified French and Xi by adjusting the distance between two adjacent driving electrodes in both horizontal and vertical directions within the claimed range because they are suitable distance for the digital microfluidics to control droplet movement. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). MPEP 2144.05(I). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). MPEP 2144.05(I).
Regarding claim 20, French teaches wherein an insulating hydrophobic layer is disposed on a side of each of the first substrate and the second substrate facing toward the microfluidic channel (Fig. 2: hydrophobic coating 207 on the inner side of the top and the bottom substrates).
Claim(s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over French in view of Xi, and further in view of Mao (US 2021/0023562).
Regarding claim 15, French and Xi disclose all limitations of claim 1 and further discloses wherein the plurality of sensing electrodes and the plurality of drive electrodes are disposed in a same layer (¶31: the top substrate may include drive electrodes and sensing electrodes). French and Xi do not disclose the plurality of sensing electrodes and the plurality of drive electrodes are made of a same material.
However, Mao teaches a digital fluidics for analyzing droplets (¶¶1, 4) using pixel 250 (¶52). Pixel 250 includes transparent electrodes, including a control electrode 252 and a sensing electrode, each which is associated with a corresponding data line and scan line (¶52). The control electrode 252 and the sensing electrode 254 are made of ITO (¶54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified French and Xi by substituting both the drive electrode and the sensing electrode with ones made of ITO, a same material, as taught by Mao. The suggestion for doing so would have been that ITO is a suitable material for drive electrode and sensing electrode of a microfluidic device and the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. MPEP § 2144.07.
Regarding claim 17, French and Xi disclose all limitations of claim 1 and further discloses a via hole of the sensing electrode to TFT (French, Fig. 7). French and Xi do not disclose the microfluidic chip further comprising a plurality of detection signal lines, wherein each of the plurality of detection signal lines is connected to one of the plurality of sensing electrodes, and the plurality of detection signal lines and the plurality of data signal lines are disposed in a same layer and in parallel.
However, Mao teaches digital fluidics for analyzing droplets (¶¶1, 4) using a circuit of pixel 250 (Fig. 5A; ¶55). The pixel 250 is and equivalent circuit of a thin-film transistor (TFT) 262 and TFT 264 (Fig. 6A; ¶55), and TFT 264 includes a first end 291 connected to sensing line 258 and a second end 292 connected to sensing electrode 254 (Fig. 6A. ¶55). Thus, each sensing line 258 would be connected to the sensing electrode. Further, Mao teaches the sensing line 258 and the data line 256 are parallel (Fig. 6A). Since the pixel 250, which incorporates the control electrode, the sensing electrode ant their associated data line and scan line are within the same substrate 102 (Fig. 5A; ¶52), thus the detection signal lines and the data signal lines are within the same layer.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified French and Xi by incorporating the detection signal lines connected to the sensing electrodes within the same layer and in parallel as taught by Mao for outputting the detecting signal from the droplets manipulated in the digital microfluidics. Here, the claimed limitations are obvious because 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 yielded nothing more than predictable results. MPEP 2143(I)(A). Since French teaches the via is a via to TFT (Fig. 6), the combined French and Mao would necessarily result in each detection signal line connected to each sensing electrode through the via hole.
Response to Arguments
Applicant’s arguments have been considered but are unpersuasive.
Regarding claim 1, Applicant’s arguments are moot because a newly cited reference, Xi, is now relied on to teach the newly added limitations.
Regarding claim 16, Applicant argues the data signal line (MET1 AC signal line) is located below the drive electrode, closer to the second substrate, which is not “farther away from the second substrate” as recited (Response, p. 11, para. 4). This argument is unpersuasive. As recited, both the drive electrodes and sensing electrodes are disposed on a side of the first substrate (see claim 1; also see Fig. 5: top TFT array; here, it is deemed to be the top substrate and thus the first substrate corresponds to the top substrate and the second substrate corresponds to the bottom substrate), and the data signal line MET1 AC signal line is below the driving electrode (Fig. 5), which means that the data signal line is on the side of the first substrate (Fig. 5: top substrate), and thus they are farther away from the second substrate or the bottom substrate.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLYN M SUN whose telephone number is (571)272-6788. The examiner can normally be reached M-F: 8:30am - 5:30pm.
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/C. SUN/Primary Examiner, Art Unit 1795