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 .
Response to Amendment
The claim objections are withdrawn in light of amendments.
The rejections pursuant to 112(b) are withdrawn in light of amendments.
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered.
Applicant’s arguments, see Priority on pages 6-7 of Remarks, filed on 11/28/2025, with respect to the Priority benefit have been fully considered and are persuasive. The rejection to the benefit of a prior-filed application, 62/961,437, has been withdrawn. The examiner will be using Application No. 62961437’s filing date as the earliest priority.
With regards to applicant’s argument under “Claims 1-4 Are Allowable under 35 U.S.C. 102” on pages 8-9 of Remarks for claims 1-4, have been fully considered but they are not persuasive. In response to applicants’ argument that Fine does not disclose at least the "dielectric layer creating an insulative barrier between the electrically conductive layer and contents of the nanochannels.", Fine does create an insulative barrier between the electrically conductive layer and contents of the nanochannels as shown in the annotated Fig.7 below. The dielectric layers (107, 153 – annotated Fig.7) create an insulative barrier between the electrically conductive layer (121) and contents of the nanochannels (115). As shown in the annotated Fig.7 below, the conductive layer is not in direct contact with the inside of the channel in the region of interest since the conductive layer extends downward to the dielectric layer (153), the metal layer (156) is disposed between the conductive layer and the nanochannel, wherein Fig.7 does not show the conductive layer and the inside of the nanochannel in direct contact with each other. Accordingly, the conductive layer and the contents of the nanochannel is separated by metal layer.
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In response to applicant’s argument that Fine gets different release rates for different voltages, and the voltage is applied directly from the conductive material to the content of the nanochannels, is not persuasive since this does not apply to the conductive layer (121), argument is also unclear due to applicant not providing evidence to support this argument.
With regards to applicant’s argument under “Claims 12-14 Are Allowable under 35 U.S.C. 103” on page 9 of Remarks for claims 12-14, have been fully considered but they are not persuasive. In response to applicants’ argument that a POSITA would recognize that the direct exposure of the metal to the physiological solution as disclosed in Fine (in the sizing of the membrane as described) would produce leakage currents substantially higher than 300 pA and how the subject matter of Claim 1 includes a membrane that allows for completely embedding of the conductive layer under a dielectric layer to minimize the leakage current, and also the dielectric layer, which creates an insulative barrier between the electrically conductive layer and contents of the nanochannels, as stated above, Fine also includes a membrane that allows for completely embedding of the conductive layer under a dielectric layer, and also the dielectric layer, which creates an insulative barrier between the electrically conductive layer and contents of the nanochannels thus also allowing minimization of the leakage current. Fine also discloses “Further enhancement and lower leakage currents can be achieved” – Para [0156], and applicant does not provide any objective evidence that demonstrates that Fine’s structure necessarily produces leakage currents outside the claimed range.
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.
Claims 1-4 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Fine et al. (US 20150088102 A1, herein, Fine).
Regarding claim 1, Fine discloses a device for controlling molecular transport, the device comprising:
a membrane (“nanochannel membranes” – Para [0082], Fig.7) comprising a plurality of nanochannels (“Multiple nanochannel lines can be coupled to each microchannel” – Para [0083], 115 – Fig.7) extending therethrough, an inner electrically conductive layer (121 – Fig.7), and an outer dielectric layer (107,151,153,155 – Fig.7), the dielectric layer creating an insulative barrier between the electrically conductive layer and contents of the nanochannels (See annotated Fig.7 below); and
at least one electrical contact region (160,163- Fig.7) positioned on a surface of the membrane and exposing the electrically conductive layer of the membrane for electrical coupling to external electronics (See annotated Fig.7 below),
wherein, when the membrane is at a first voltage, molecules flow through the nanochannels at a first release rate, and
wherein, when the membrane is at a second voltage, charge accumulation within the nanochannels modulates the flow of molecules through the nanochannels to a second release rate that is different than the first release rate (“the overall released amount for 0.9 applied Volts results larger than the amount released by applying 1.8 Volts” – Para [0283],Para [0300], Para [0322]).
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Regarding claim 2, Fine discloses a device for controlling molecular transport as recited above, further comprising a handle layer positioned beneath the membrane, the handle layer comprising at least one macrochannel (111 – Fig. 3) extending therethrough and fluidically coupled to the plurality of nanochannels of the membrane (“a nanochannel line coupled to microchannels and a macrochannel” – Para [0084], [0044], [0029], Fig.7).
Regarding claim 3, Fine discloses a device for controlling molecular transport as recited above, wherein edges of a dielectric layer (107 – Fig.7) define a gap in the dielectric layer that exposes an electrically conductive layer (121 – Fig.7) at the at least one an electrical contact region (160,163 – Fig.7) (See annotated Fig.7 below).
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Regarding claim 4, Fine discloses a device for controlling molecular transport as recited above, wherein each nanochannel (115 – Fig.7) comprises an outlet on an upper surface of the membrane (117 – Fig.7) and an inlet (113 – Fig.7) connected to a microchannel (111 – Fig.7).
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.
Claims 12-14 are rejected under 35 U.S.C. 103 as being unpatentable over Fine et al. (US 20150088102 A1, herein, Fine).
Regarding claim 12, Fine discloses a device for controlling molecular transport as recited above wherein the at least one macrochannel is square shaped (A-1 – Fig.8) but fails to explicitly disclose wherein the at least one macrochannel is hexagonal.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the macrochannel of Fine to be hexagonal in shape since it has been held that mere changes in shape are obvious, MPEP 2144.04 IV B: In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant). In the instant case, the device of Fine would not operate differently with the claimed shape of the macrochannel considering Fine discloses a square shaped macrochannel. Further, applicant places no criticality on the shape claimed, indicating simply “Ellipsoidal, triangular, square, pentagonal, hexagonal, or generally polygonal cross-sectional macrochannel shapes are possible and within the scope of this disclosure” (Para [0058]).
Regarding claim 13, Fine discloses a device for controlling molecular transport as recited above, wherein a plurality of the macrochannels are arranged in a honey-comb pattern (A-1 - Fig. 8).
Regarding claim 14, Fine discloses a device for controlling molecular transport as recited above wherein “Further enhancement and lower leakage currents can be achieved” – Para [0156], but does not disclose wherein when submerged in a physiological solution, a current leakage of the device is less than 300 microamps when the first voltage applied to the at least one electrical contact region is from -1V to -3V.
However, it would have been obvious to one in the ordinary skill in the art before the effective filing date of the claimed invention to determine that the structure of the device of Fine would have the capabilities of being submerged in a physiological solution where a current leakage of the device is less than 300 microamps when the first voltage applied to the at least one electrical contact region is from -1V to -3V .
Claims 43-45 and 47 are rejected under 35 U.S.C. 103 as being unpatentable over Fine in view of Cheng et al. (US Pub No. 20080233691 A1, herein, Cheng).
Regarding claim 43, Fine discloses a device for controlling molecular transport as recited above, but Fine does not expressly disclose wherein the electrically conducted layer contains silicon and the dielectric layer contains silicon oxide.
Cheng teaches an electrically conducted layer (120 – Fig.1A) containing silicon (“comprises polysilicon” – Para [0020]) and a dielectric layer (115 – Fig.1A) containing silicon oxide (“comprises silicon dioxide” – Para [0020]).
Therefore, it would be obvious to one in the ordinary skill in the art, before the effective filing date of the applicant’s claimed invention to modify the electrically conductive layer and the dielectric layer disclosed by Fine, to comprise silicon and silicon oxide as taught by Cheng since Cheng teaches that silicon is a known material suitable for inclusion in an electrically conductive layer and silicon oxide is a known material suitable for inclusion in an dielectric layer (Cheng, Para [0020]).
Regarding claim 44, Fine discloses a device for controlling molecular transport as recited above, but Fine does not expressly disclose wherein the electrically conducted layer contains silicon and the dielectric layer contains silicon carbide.
Cheng teaches an electrically conducted layer (120 – Fig.1A) containing silicon (“comprises polysilicon” – Para [0020]) and a dielectric layer (115 – Fig.1A) containing silicon carbide (“silicon carbide” – Para [0020]).
Therefore, it would be obvious to one in the ordinary skill in the art, before the effective filing date of the applicant’s claimed invention to modify the electrically conductive layer and the dielectric layer disclosed by Fine, to comprise silicon and silicon carbide as taught by Cheng since Cheng teaches that silicon is a known material suitable for inclusion in an electrically conductive layer and silicon carbide is a known material suitable for inclusion in an dielectric layer (Cheng, Para [0020]).
Regarding claim 45, Fine discloses a device for controlling molecular transport as recited above, but Fine does not expressly disclose wherein the electrically conducted layer contains doped polysilicon.
Cheng teaches an electrically conducted layer (120 – Fig.1A) containing doped polysilicon (“doped polysilicon” – Para [0020]).
Therefore, it would be obvious to one in the ordinary skill in the art, before the effective filing date of the applicant’s claimed invention to modify the electrically conductive layer disclosed by Fine, to comprise doped polysilicon as taught by Cheng since Cheng teaches that doped polysilicon is a known material suitable for inclusion in an electrically conductive layer (Cheng, Para [0020]).
Regarding claim 47, Fine discloses a device for controlling molecular transport as recited above, but Fine does not expressly disclose wherein the dielectric layer contains silicon carbide.
Cheng teaches a dielectric layer (115 – Fig.1A) containing silicon carbide (“silicon carbide” – Para [0020]).
Therefore, it would be obvious to one in the ordinary skill in the art, before the effective filing date of the applicant’s claimed invention to modify the dielectric layer disclosed by Fine, to comprise silicon carbide as taught by Cheng since Cheng teaches that silicon carbide is a known material suitable for inclusion in a dielectric layer (Cheng, Para [0020]).
Claim 46 is rejected under 35 U.S.C. 103 as being unpatentable over Fine in view of Cheng, and further in view of Ipri et al. (US Pub No. 4035829 A).
Regarding claim 46, Fine, as modified above, discloses a device for controlling molecular transport as recited above, but Fine does not expressly disclose wherein the electrically conducted layer contains phosphorus doped polysilicon.
Ipri teaches an electrically conducted layer (26 – Fig.1) containing phosphorus doped polysilicon (“A doped (phosphorus) polysilicon layer” – Col.2, line 58, Col.2, lines 49-51).
Therefore, it would be obvious to one in the ordinary skill in the art, before the effective filing date of the applicant’s claimed invention to modify the electrically conductive layer as disclosed by Fine, as modified, to contain phosphorus doped polysilicon as taught by Ipri since Ipri teaches that phosphorus doped polysilicon is a known material suitable for inclusion in an electrically conductive layer (Ipri, Col.2, line 58).
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/MARISSA TAYLOR/Examiner, Art Unit 3783 /BHISMA MEHTA/Supervisory Patent Examiner, Art Unit 3783