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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/12/2026 has been entered.
Response to Amendment
The Amendment filed on 03/12/2026 has been entered. Claims 19-20, 22-28 and 31-36 remain pending in the application. Claims 35-36 are withdrawn. Claims 19-20, 22-28 and 31-34 are being examined herein.
Status of Objections and Rejections
The objection of claim 27 is withdrawn in view of Applicant's amendment.
The rejection of claims 20, 23, 24, 26 and 30 under 35 U.S.C. 112(b)
The rejection of claims under 35 U.S.C. 103 as being unpatentable over [xxx] is withdrawn in view of Applicant's amendment.
New grounds of rejection under 35 U.S.C. 103 are necessitated by the amendments
Claim Objections
Claim 24 objected to because of the following informalities:
Claim 19, 5th para.
, 2nd line “alternation of” should read “alternating”;
claim 24, line 2, “alternation” should read “alternating”.
Appropriate correction is required.
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 26 is 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.
Claim 26 is amended to recite the limitation "wherein the multi-layered substrate comprises a plurality of electrically conducting layers separated by a corresponding plurality of electrically insulating layers" in lines 1-3. It is unclear if the electrically conducting layers and the electrically insulating layers are the same as the ones in claim 19, lines 11-12. Clarification is requested. For the purpose of examination, they are being interpreted as the same layers.
Furthermore, claim 26 recites the limitation “wherein the part of said electrodes formed along each of the at least two side walls comprises a plurality of alternating electrically conducting and electrically insulating portions formed by respective ones of the plurality of electrically conducting layers and the plurality of electrically insulating layers” in lines 4-8. It is unclear if these electrically conducting and insulating portions are the same or different than the electrically conducting and insulating portions in claim 24 referencing the portions in claims 19. If not, since in claim 19, one of the at least two side walls already have a plurality of alternating electrically conducting and insulating portions formed, it is unclear if the electrically conducting and insulating portions in this claim include the portions in claim 19. Clarification is requested. For the purpose of examination, they are being interpreted as the same portions as the ones in claim 24.
Claim Rejections - 35 USC § 103
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.
Claims 19-20, 22-28 and 31-34 rejected under 35 U.S.C. 103 as being unpatentable over Paik et al. (US 20170097332) in view of Liu et al. (US 20100327874).
Regarding claim 19, Paik teaches a fluidic device configured for processing a fluid or species therein, the device comprising:
a 3D channel (fluidic chamber)(Fig. 5A and para. 0050) comprising an inlet (top portion) for receiving a sample fluid, an outlet (outlet of the bottom portion)(annotated Fig. A) the for outputting the sample fluid (para. 0050 and Fig. 5A) and a plurality of pillars (the structures between two pores 503 in the middle of Fig. 5A) positioned to divide the 3D channel into a plurality of sub-channels (two pores 0503 in the middle of Fig. 5A), the 3D channel being adapted for guiding flow of the sample fluid in an axial direction (top to bottom) from the inlet to the outlet (para. 0050), and the 3D channel comprising at least two side walls (the inner wall of two of pores that are near the edge of the membrane, see annotated Fig. A )
a controllable flow inducer comprising a electrode (sensing electrode 0500),
wherein the 3D channel is formed in a multi-layered substrate (SiO2 membrane with an embedded platinum electrode, and the membrane is on a silicon substrate)(para. 0075) comprising an electrically conducting layer (sensing electrode 0500) separated by an electrically insulating layer (silicon dioxide)(Fig. 5A), wherein each of the plurality of pillars has pillar surfaces internal to the 3D channel and distinct from said at least two side walls (see annotated Fig. 5A), said pillar surfaces of the plurality of pillars constituting sub-channel walls with respect to the plurality of sub-channels (annotated Fig. A),
Paik teaches an apparatus for processing biological fluid, detecting through separating analyte that are biomolecules (abstract). Specifically, Paik teaches the apparatus is electrical detection of biomolecules based on solid-state nanopores. Paik teaches the apparatus comprises a fluidic chamber (3D channel) including a top portion and a bottom portion separated by nanopores in a SiO2 membrane (para. 0050). Paik further teaches when an electric bias is applied across the SiO2 membrane functionalized with a capturing tag, the target biomolecule bound the capturing tag proximally to the pores is translocated into the nanopores generating an electrical signal which can be detected by a sensing electrode (para. 0050).
Paik teaches the SiO2 membrane including only one electrically conducting layer embedded horizontally across the nanopore structures forming a sensing electrode (0500)(Fig. 5) and thus fails to teach the controllable flow inducer comprising electrodes for inducing, when the sample fluid is flowing through the 3D channel, a motion of the sample fluid in the 3D channel in a plane substantially orthogonal to the axial direction (Fig. 5), and the multi-layered substrate comprising at least two electrically conductive layers separated by the insulting layer, and wherein at least part of said electrodes is formed along each of the sub-channel walls and along at least one of the two side walls by alternation of at least an electrically conducting portion formed by one of the at least two electrically conducting layers, an electrically insulating portion formed by the electrically insulating layer and a further electrically conducting portion formed by the other one of the at least two electrically conducting layers.
However, Liu teaches the apparatus is electrical detection of biomolecules based on translocation of biomolecules through the solid-state nanopores (Figs. 1A and 4). Liu teaches the apparatus comprising a sensing electrode (120) sandwiched between two modulating electrodes (128a and 128b) and a signal lock-in circuit, wherein the electrodes are separated by insulating material (Fig. 1A). Liu further teaches the electrodes can be configured for a vertically-oriented nanopore similar to that of Fig. 4 (para. 0004), where the modulating electrodes and the sensing electrodes (electrically conducting layers) are stacked on each other separated by insulating material (insulating layers) (Fig. 4) along the wall of a nanopore. Liu further teach the use modulating electrodes (128a and 128b) in combination with a signal lock-in circuit enable modulation of the sensed signal to provide enhanced signal levels (paras. 0023-0024).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the SiO2 membrane with one electrically conducting layer embedded horizontally across the nanopore structures forming one sensing electrode taught by Paik to further embedded two modulating electrodes (electrically conducting layers) horizontally across the nanopores structures, and also include a signal lock-in circuit, wherein the modulating electrodes and the sensing electrodes (electrically conducting layers) are stacked above each other and separated by insulating material (insulating layers) along the wall of a nanopore as taught by Liu (Liu, Fig. 4) because such modification enhances signal level (Liu, para. 0025) with a reasonable expectation of success (Liu, para. 0025) (MPEP 2143)(I)(G).
The teachings of Paik as modified by Liu would yield the controllable flow inducer comprising electrodes (sense electrode sandwiched by two modulating electrodes) for inducing, when the sample fluid is flowing through the 3D channel, a motion of the sample fluid in the 3D channel in a plane substantially orthogonal to the axial direction (voltage bias is applied to the modulating electrodes along the axial direction of the channel, it induced fluid motion such as electroosmotic flow), and the multi-layered substrate comprising at least two electrically conductive layers separated by the insulting layer (modulating and sense electrodes, each embedded in the SiO2 membrane of Paik, Fig 5A of Paik and Fig 4 of Liu), and wherein at least part of said electrodes is formed along each of the sub-channel walls and along at least one of the two side walls by alternation of at least an electrically conducting portion formed by one of the at least two electrically conducting layers, an electrically insulating portion formed by the electrically insulating layer and a further electrically conducting portion formed by the other one of the at least two electrically conducting layers (in modified Paik, each structure between the pores will have a sense electrode sandwich by two modulating electrodes, Fig. 5A of Paik and Fig. 4 of Liu).
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Figure A. Annotated bottom portion of Fig. 5A of Paik.
Regarding claim 20, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik further teaches wherein the multi- layered substrate is a semiconductor-on-insulator substrate (Paik, para. 00075 and Table 2, SiO2 membrane on Si substrate) and the 3D channel corresponds to an etched region (the 3D channel comprises pores, which are etched, para. 0075 and Table 2, step 9.0) of the semiconductor-on-insulator substrate, wherein at least one of said at least two side walls (two sides walls are two of the pores, see annotated Fig. A) of the 3D channel corresponds to a side wall (one of the pores) of the etched region.
Regarding claim 22, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19 wherein the multi-layered substrate is a semiconductor-on-insulator substrate (Paik, para. 00075 and Table 2, SiO2 membrane on Si substrate).
Regarding claim 23, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik further wherein an upper and a bottom portion of the at least two side walls (the wall of two of the pores) is formed in a respective one of said at least two electrically conducting layers of the multi-layered substrate and at least one intermediate portion of the at least two side walls is formed in said electrically insulating layer of the multi-layered substrate (in modified Paik, the modulating electrodes and the sense electrode are in vertically stack configuration similar to that shown in Fig. 4 of Liu. One of the modulating electrodes is above the sense electrode separated by an insulating SiO2, Fig. 5A of Paik and Figs. 1 and 4 of Liu).
Regarding claim 24, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik further wherein at least part of said electrodes is formed along each of said at least two side walls (the inner wall of two of the pores, see annotated Fig. A) by alternating at least said electrically conducting portion, said electrically insulating portion and said further electrically conducting portion (in modified Paik, the electrodes are embedded horizontally across all the pores, and one of the modulating electrodes is above the sense electrode separated by an insulating SiO2).
Regarding claim 25, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik further teaches wherein the electrically conducting portions along the at least two side walls (the inner wall of two of the pores, see annotated Fig. A) are symmetric with respect to a symmetry axis in the 3D channel (the axis that aligns with a horizontal plane and passes through the horizontal midline of the sensing electrode)(the modulating electrodes sandwich the sensing electrode, and thus symmetrical with respect the axis).
Regarding claim 26, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 24. Modified Paik further teaches wherein the multi-layered substrate comprises a plurality of electrically conducting layers separated by a corresponding plurality of electrically insulating layers (the plurality of electrically conducting layers and the corresponding insulating layers are being interpreted as the same as the layers of claim 19. See 35 U.S.C. 112(b) above. If they are not intended to be the same layers as the ones in claim 19, then see the rejection below), wherein the part of said electrodes formed along each of the at least two side walls comprises a plurality of alternating electrically conducting and electrically insulating portions formed by respective ones of the plurality of electrically conducting layers and the plurality of electrically insulating layers (In modified Paik, the electrodes are embedded horizontally across all the pores and are separated by an insulating SiO2 forming the alternating electrically conducting and insulating portions. Fig. 4).
If the limitation is intended to claim a plurality of electrically conducting layers separated by a corresponding plurality of electrically insulating layers that are different from the layers of claim 19, then the following rejection is put forth.
Modified Paik teaches a sensing electrode sandwiched by two modulating electrodes.
However, Liu teaches an embodiment where two sensing electrodes are sandwich by two modulating electrodes (Fig. 2A). Liu teaches the use of two sensing electrodes instead of one is known alternative to a POSITA (para. 0027).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the one sensing electrode taught by modified Paik to two sensing electrodes as taught by Fig. 2A of Liu because one of ordinary skill in the art would accordingly have recognized the two sensing electrodes would result in the predictable result of providing is valid alternative one sensing electrode (Liu, para. 0027).
The teachings of modified Paik would yield a multi-layered substrate comprises four electrically conducting layers (two sensing and two modulating electrodes) separated by a corresponding plurality of electrically insulating layers, and thus meet both the limitation of claim 19 and this claim.
Regarding claim 27, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik teaches wherein the at least two side walls (the inner wall of two of the pores, see annotated Fig. A) of the 3D channel are covered by an electrically insulating layer (the top layer of the pore structure is an insulating layer just above the top modulating electrode, Paik, Fig 5A).
Regarding Claim 28, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Paik further teaches wherein the 3D channel furthermore comprises a top wall or
Regarding claim 31, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Modified Paik further wherein the electrode configuration provides an electric field distribution having a maximum substantially at half of the depth of the 3D channel (interpreted as an intended use because a power source is not positive recited. The electrode configuration of modified Paik meets the structurally limitation of the intended use with the appropriate applied voltage actuation/modulation).
Regarding claim 32, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 19. Paik further the fluidic system being any of a mixing system, a separation system, a chemical production system or a biotechnological production system (interpreted as an intended use. Modified Paik’s apparatus meets the structural limitation of the intended, e.g., it can be used for separating target analyte and electrical modulating causes mixing, Paik, abstract, para. 0005).
Regarding claim 33, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 32. Modified Paik further wherein the fluidic system is an on-chip system (para. 0049).
Regarding claim 34, modified Paik teaches all of the elements of the current invention as stated above with respect to claim 32. Modified Paik further teaches the system being configured for processing a fluid in a fluid flow in the process of separating components in a flow, in the process of production of chemical components, in the process of analyzing components in a flow or in the process of production of biotechnological components (interpreted as a functional limitation. Fig. 2, para. 0071, the apparatus of Paik is structurally capable of separating target analyte by binding the analyte to the tag that is functionalized near the pores).
Response to Arguments
Applicant’s arguments with respect to claims 19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.L.C./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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