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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. GB2001051.8, filed on 01/24/2020.
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant's arguments filed 11/12/2025 have been fully considered but they are not persuasive. The combination of Isaaac et al. (US20200197941A1) and Chiou et al. (US20030224528A1) reads on claim(s) 1-13.
In response to applicant's argument that the prior art does not disclose the step of "making an adjustment to a first optical assembly whilst one or more of the microdroplets are held in place.", the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, The vague term “adjustment” in Claim 1 could refer to optic assembly wavelength, distance, angle, and/or quantity to image microdroplets held in the array. It is also unclear what structural component or biophysical force is holding the microdroplets in place while adjusting the optical assembly, nor the magnitude of adjustment. Thus, the claim is open to the broadest reasonable interpretation, and is anticipated/obvious in view of the prior art.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a holding cavity or structure for the array of microdroplets) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections.
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)(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 and 2 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by ISAAC et al. (US20200197941A1).
Regarding Claim 1, Isaac et al. teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085], the method comprising:
temporarily forming a plurality of oEWOD traps on a surface of the chip to cause a plurality of microdroplets on the surface of the chip to form an array of microdroplets (See how the detection zone may comprise a surface provided with locations to which the microdroplets are ultimately driven by one or a combination of conventional or optically-mediated EWOD in [0036], [0059], [0083]-[0086] in Fig. 1-3 and Claim(s) 1-2 and 12-13; Also, see the plastic plates 17a and 17b, i.e. composite walls, and microdroplets 15 in [0084] in Fig. 1-2);
holding the entire array of microdroplets whilst inspecting at least one subset of the array (See how the microdroplets are inspected in zone 2 in [0059]-[0061], [0080] in Fig. 1-3 and Claim 15),
wherein the inspection of at least one subset of the array includes the sub-steps of: making an adjustment to a first optical assembly whilst one or more of the microdroplets are held in place (See the LED light source 23, i.e. an optical assembly, that is controlled by a microprocessor in [0084] and see the two photoactive layer discussed in [0021],[0057] in Fig. 1-3: Also, see how the microdroplets 15 are transported to final location and held in detection zone 2 where they are interrogated with light from a LED source and any fluorescence emitted by each microdroplet detected using a photodetector in [0083]-[0084] in Fig. 1-3; One skilled in the arts would anticipate "adjusting" optic wavelength, distance, angle, and/or quantity to image microdroplets held in the array. It is also unclear what structural component or biophysical force is holding the microdroplets in place while adjusting the optical assembly, nor the magnitude of adjustment).
Regarding Claim 2, Isaac et al. teaches the method limitations of claim 1.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the step of holding the entire array of microdroplets is facilitated by the substeps of: temporarily forming a second array of oEWOD traps on the surface of the chip; and aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array (See the at least one electrowetting pathway, i.e. an array, in [0009]-[0024], [0037], [0054]-[0058] in Fig. 1-3; Also, see the various electrowetting locations 25 in [0083]-[0084] in Fig. 1-3 and Claim(s) 1-2 and 12-13).
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.
Claim(s) 3-13 are rejected under 35 U.S.C. 103 as being unpatentable over Isaac et al. (US20200197941A1) as applied to claim(s) 1 and 2 above, and further in view of Chiou et al. (US20030224528A1).
Regarding Claim(s) 3-5, Isaac et al. teaches the method limitations of claim 2.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the step of temporarily forming the plurality of oEWOD traps is carried out by an optical assembly and the step of temporarily forming a second array of oEWOD traps on the surface is carried out by a second optical assembly; and wherein the step of aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array enables a step of handing off the holding of the entire array of microdroplets between the first optical assembly and the second optical assembly (See the light source 23, i.e. an optical assembly in [0020]-[0024], [0044], [0056]-[0057], [0084] in Fig. 2 and Claim(s) 1-2, 12-13, and 15; An ordinary person skilled in the arts would think to add an additional light source);
wherein one or more of the microdroplets are held in place by second array of oEWOD traps (See the light source 23, i.e. an optical assembly in [0020]-[0024], [0044], [0056]-[0057], [0084] in Fig. 2 and Claim(s) 1-2, 12-13, and 15; An ordinary person skilled in the arts would think to the light source to better analyze the microfluidic chip).
Though Isaac et al. suggests adding additional optical assemblies (see in [0044]), Isaac et al. does not explicitly teach the step of temporarily forming a second array of oEWOD traps on the surface is carried out by a second optical assembly; wherein the step of aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array enables a step of handing off the holding of the entire array of microdroplets between the first optical assembly and the second optical assembly; and wherein one or more of the microdroplets are held in place by second array of oEWOD traps.
However, in the analogous art of systems and methods for optical actuation of microfluidics based on opto-electrowetting, Chiou et al. teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 1-28, and the microfluidic circuit 100 illustrated in Fig. 1-2 in [0033]-[0048]), with the step of temporarily forming a second array of oEWOD traps on the surface is carried out by a second optical assembly; wherein the step of aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array enables a step of handing off the holding of the entire array of microdroplets between the first optical assembly and the second optical assembly; and wherein one or more of the microdroplets are held in place by second array of oEWOD traps (See the light sources 122 and 124, i.e. optical assemblies, in [0033]-[0048] in Fig. 1-2 and Claim(s) 1, 9-11, 16-17, and 26-27; Also, see in [0013]-[0018]).
Thus, it would be obvious to one of ordinary skill in the arts to modify or combine the method steps of Isaac et al by incorporating the steps of: temporarily forming a second array of oEWOD traps on the surface is carried out by a second optical assembly; wherein the step of aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array enables a step of handing off the holding of the entire array of microdroplets between the first optical assembly and the second optical assembly; and wherein one or more of the microdroplets are held in place by second array of oEWOD traps (as taught by Chui et al.) for the benefit of manipulating and analyzing droplets on a microfluidic chip.
Regarding Claim(s) 6-7, Isaac et al. teaches the method limitations of claim 1.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the method further comprises manipulation of the microdroplets in the following steps: selecting a subset of microdroplets from the array of microdroplets based on the inspection of the contents of the microdroplets (See how the microdroplets are inspected in [0059]-[0061], [0080] in Fig. 1-3 and Claim 15);
de-activating all oEWOD traps except for those trapping the selected subset of microdroplets; and performing a flush operation to remove the microdroplets not in the selected subset from the array of microdroplets (An ordinary person skilled in the arts would think to de-activate the unwanted oEWOD traps and to wash the microfluidic chip after experimentation or imaging; See in [0040] and Claim 14 in Fig. 1-2);
wherein the flush operation comprises: reordering the array of microdroplets using the oEWOD traps of the first optical assembly or the second optical assembly such that the removal of the microdroplets not in the subset is not impeded by the microdroplets which are in the subset, and/or admitting a continuous phase into the microfluidic chip via a plurality of fluid inlets to remove microdroplets not in the selected subset once the associated oEWOD traps have been de-activated (See the light source 23, i.e. an optical assembly in [0020]-[0024], [0044], [0056]-[0057], [0084] in Fig. 2 and Claim(s) 1-2, 12-13, and 15; An ordinary person skilled in the arts would think to add an additional light source; See in Claim 14 in Fig. 1-2).
Isaac et al. suggests but does not explicitly teach the method, wherein the method further comprises manipulation of the microdroplets in the following steps: selecting a subset of microdroplets from the array of microdroplets based on the inspection of the contents of the microdroplets; de-activating all oEWOD traps except for those trapping the selected subset of microdroplets; and performing a flush operation to remove the microdroplets not in the selected subset from the array of microdroplets; and wherein the flush operation comprises: reordering the array of microdroplets using the oEWOD traps of the first optical assembly or the second optical assembly such that the removal of the microdroplets not in the subset is not impeded by the microdroplets which are in the subset, and/or admitting a continuous phase into the microfluidic chip via a plurality of fluid inlets to remove microdroplets not in the selected subset once the associated oEWOD traps have been de-activated.
However, in the analogous art of systems and methods for optical actuation of microfluidics based on opto-electrowetting, Chiou et al. teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 1-28, and the microfluidic circuit 100 illustrated in Fig. 1-2 in [0033]-[0048]), with the step of temporarily forming a second array of oEWOD traps on the surface is carried out by a second optical assembly (See the light sources 122 and 124, i.e. optical assemblies, in [0033]-[0048] in Fig. 1-2 and Claim(s) 1, 9-11, 16-17, and 26-27);
wherein the step of aligning one or more of the oEWOD traps of the second array with the oEWOD traps of the first array enables a step of handing off the holding of the entire array of microdroplets between the first optical assembly and the second optical assembly; the method further comprising: making an adjustment to the first optical assembly whilst one or more of the microdroplets are held in place by second array of oEWOD traps (See the substrate assembly 500 in [0064], [0069], [0073] and Claim 7 in Fig. 5; Also, see in [0013]-[0018]).
Thus, it would be obvious to one of ordinary skill in the arts to modify or combine the method of Isaac et al by incorporating the steps of: selecting a subset of microdroplets from the array of microdroplets based on the inspection of the contents of the microdroplets; de-activating all oEWOD traps except for those trapping the selected subset of microdroplets; performing a flush operation to remove the microdroplets not in the selected subset from the array of microdroplets; and wherein the flush operation comprises: reordering the array of microdroplets using the oEWOD traps of the first optical assembly or the second optical assembly such that the removal of the microdroplets not in the subset is not impeded by the microdroplets which are in the subset, and/or admitting a continuous phase into the microfluidic chip via a plurality of fluid inlets to remove microdroplets not in the selected subset once the associated oEWOD traps have been de-activated (as taught by Chui et al.) for the benefit of manipulating and analyzing droplets on a microfluidic chip
Regarding Claim(s) 8-9, the combination of Isaac et al. and Chiou et al. teaches the method limitations of claim 5.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the adjustment to the first optical assembly comprises at least one of: a change in resolution, a change in magnification, a change in field of view, a change to illumination source, a change in a colour-selective element comprised in the assembly, and exchanging a lens assembly which is in closest proximity to the sample being imaged (See how the one of more lasers or LEDs to interrogate the contents of each microdroplet and one or more photodetectors or an equivalent devices tuned to the characteristic fluorescence wavelength(s) or wavelength envelope(s) in [0059]-[0060], [0084] in Fig. 1-2; An ordinary person skilled in the arts typically adjust light source tools in these ways);
wherein the method further comprises: using the first optical assembly to carry out a further inspection of the contents of the array of microdroplets after making the adjustment (See how the microdroplets are inspected in [0059]-[0061], [0080] in Fig. 1-3 and Claim 15; Also, see in [0013]-[0018]).
Regarding Claim(s) 10-12, the combination of Isaac et al. and Chiou et al. teaches the method limitations of claim 5.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the step of forming the array of microdroplets comprises: forming the first array of oEWOD traps using the first optical assembly; and loading the plurality of microdroplets onto the surface of the chip where the first array of oEWOD traps is located (See in [0083]-[0085] in Claim 1).
Isaac et al. suggests but fails to explicitly teach a method, wherein the method further comprises: deactivating the first optical assembly and using the oEWOD traps formed by the second optical assembly to translate the array of microdroplets across the surface of the microfluidic chip; wherein the step of forming the array of microdroplets comprises the initial steps of: forming a plurality of oEWOD traps using the second optical assembly in the shape of a target array; determining the locations of the plurality of microdroplets on the surface of the microfluidic chip using the first optical assembly; and using the plurality of oEWOD traps formed by the first assembly to manipulate the plurality of microdroplets into an array matching the target array of oEWOD traps.
However, in the analogous art of systems and methods for optical actuation of microfluidics based on opto-electrowetting, Chiou et al. teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 1-28, and the microfluidic circuit 100 illustrated in Fig. 1-2 in [0033]-[0048]), wherein the method further comprises: deactivating the first optical assembly and using the oEWOD traps formed by the second optical assembly to translate the array of microdroplets across the surface of the microfluidic chip (See the light sources 122 and 124, i.e. optical assemblies, in [0033]-[0048] in Fig. 1-2 and Claim(s) 1, 9-11, 16-17, and 26-27);
wherein the step of forming the array of microdroplets comprises the initial steps of: forming a plurality of oEWOD traps using the second optical assembly in the shape of a target array; determining the locations of the plurality of microdroplets on the surface of the microfluidic chip using the first optical assembly; and using the plurality of oEWOD traps formed by the first assembly to manipulate the plurality of microdroplets into an array matching the target array of oEWOD traps (See the substrate assembly 500 in [0064], [0069], [0073] and Claim 7 in Fig. 5; Also, see in [0013]-[0018]).
Thus, it would be obvious to one of ordinary skill in the arts to modify or combine the method of Isaac et al by incorporating steps of: deactivating the first optical assembly and using the oEWOD traps formed by the second optical assembly to translate the array of microdroplets across the surface of the microfluidic chip; wherein the step of forming the array of microdroplets comprises the initial steps of: forming a plurality of oEWOD traps using the second optical assembly in the shape of a target array; determining the locations of the plurality of microdroplets on the surface of the microfluidic chip using the first optical assembly; and using the plurality of oEWOD traps formed by the first assembly to manipulate the plurality of microdroplets into an array matching the target array of oEWOD traps (as taught by Chui et al.) for the benefit of manipulating and analyzing droplets on a microfluidic chip.
Regarding Claim 13, the combination of Isaac et al. and Chiou et al. teaches the method limitations of claim(s) 1-12.
Isaac et al. further teaches a method of inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD) (See the Abstract, Claim 16, and the microfluidic chip illustrated in Fig. 1-3 in [0009], [0083]-[0085]), wherein the inspection of the contents of the microdroplets is carried out using at least one of: fluorescent imaging, localized optical plasmon resonance on metal nanoparticles, FRET, darkfield, brightfield, Raman, absorption, Quantum dot fluorescence, spectroscopy (See how the inspection of the contents of the microdroplets is carried out using at least one of: fluorescent imaging, localized optical plasmon resonance on metal nanoparticles, FRET, darkfield, brightfield, Raman, absorption, Quantum dot fluorescence, spectroscopy in [0059] in Fig. 1-3).
Thus, the independent claim 1 and the dependent claim(s) 2-13 are not allowable over the available prior art as currently submitted.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Smith et al. (US7939021B2) and Zhao et al. (US20200391213A1) disclose similar methods and devices for inspecting and/or selecting microdroplets on a microfluidic chip by optically-mediated electrowetting (oEWOD).
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 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRITNEY N WASHINGTON whose telephone number is (703)756-5959. The examiner can normally be reached Monday-Friday 7:00am - 3:30pm CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRITNEY N. WASHINGTON/Examiner, Art Unit 1797
/JENNIFER WECKER/Primary Examiner, Art Unit 1797
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