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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/16/26 has been entered.
Status of Claims
Applicant’s reply filed 1/20/26 is acknowledged. Claim 16 was added. Claims 1-16 are pending and are under examination.
Response to Reply
Claim Objections
Claims 1 and 7 are objected to because of the following informalities: “the second pattern includes microchannels” should be amended to “the second patterns include microchannels”. Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second pattern includes microchannels (claims 1 and 7) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
In light of applicant’s claim amendments, the prior rejection under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, is modified, and a new rejection follows.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-6, 14 and 16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is rejected because “wherein the second patterns are formed to at least partially extend into the first region to overlap an edge portion of the first pattern” does not appear to be supported by the originally filed disclosure. In e.g., [0012] and [0071] of applicant’s PGPub., it appears the second patterns are overlapped with an edge portion of the first patterns. Thus, it appears the first patterns overlap the second patterns.
Claim 16 is rejected because there appears to be no support for the newly amended claim language, the first region is one of a plurality of first regions, and wherein the second region is disposed to connect the plurality of first regions.
In light of applicant’s claim amendments, the prior rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, are withdrawn.
Prior Art Rejections
In light of applicant’s claim amendments, the prior art rejections are maintained except for the rejection over Alikhani in view of Baek, which is modified.
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 1, 2, 6-8, 11, 12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Alikhani et al. (“Alikhani,” An interesting route using electron‑beam lithography and photolithography to pattern submicron interdigitated electrodes array for sensing applications, published online 8/19/2019, previously cited) in view of Baek et al. (“Baek,” US Pub. No. 2009/0152598, previously cited and cited in IDS).
As to claims 1, 2, 8 and 14, Alikhani teaches a method for manufacturing a medical diagnostic chip using a mixed lithography method (e.g., abstract et seq. on p. 187), comprising: forming first patterns in a first region by performing a first lithography (e.g., lithography the nanometric interdigitated electrodes with EBL technology on p. 188); and forming second patterns in a second region by performing a second lithography (photolithography should be used for lithographing the connecting parts and pads on p. 188 et seq.).
Regarding claims 1 and 14, while Alikhani teaches the first patterns connect to the second patterns in fig. 3a-d and 5, Alikhani does not specifically teach the second patterns include microchannels, and the second patterns at least partially extend into the first region to overlap an edge portion of the first pattern. Baek teaches in [0036] a fluid pipe 31 (“microchannels”); and in [0047] and FIG. 5E, forming a protection resist pattern 17 for protecting the silicon nanowire patterns 16A and 16B by a photolithography process. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have microchannels because it would be desirable to allow fluid to flow through the chip. Also, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have second patterns partially overlap the first patterns because it would protect the first patterns ([0047] of Baek).
As to claims 6 and 12, Alikhani teaches applying a positive or negative photoresist during the second lithography to form second patterns on p. 188 in “Methods” section et seq.
As to claims 7 and 15, the combination of Alikhani and Baek teach forming first patterns, forming second patterns, and forming photo patterns in a portion wider than the first region on p. 187 et seq. of Alikhani; and teach the photo patterns cover and protect the first patterns formed in the first region in [0047] of Baek. Regarding claim 7, Alikhani does not specifically teach the second patterns include microchannels. Baek teaches in [0036] a fluid pipe 31 (“microchannels”). It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have microchannels because it would be desirable to allow fluid to flow through the chip.
As to claim 11, the combination of Alikhani and Baek teach forming photo patterns to cover and protect; and to extend laterally beyond boundaries of the first region and cover an entire surface of the first patterns, such that the first patterns are shielded from exposure or etching during the second lithography (p. 188 et seq. of Alikhani; and [0048] of Baek).
As to claim 16, the combination of Alikhani and Baek teach the first region is one of a plurality of first regions, and the second region is disposed to connect the plurality of first regions. See figs. 3a-d and 5 of Alikhani, and [0036] et seq. of Baek.
Claims 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Alikhani in view of Baek, as applied to claim 1 above, and further in view of Astier et al. (“Astier,” US Pub. No. 2016/0144405, previously cited).
See Alikhani and Baek above.
As to claim 3, the combination of Alikhani, Baek and Astier teach the resist pattern 308 is formed into resist pillars in the pattern of the future nanopillar array in e.g., [0065] of Astier. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to form nanopillar pattern because it would allow the device to separate entities ([0002] of Astier).
As to claim 4, Alikhani teaches applying a positive electron beam resist during EBL to form first patterns on p. 191 et seq.
As to claim 5, the combination of Alikhani and Baek teach forming the second patterns to overlap the edge portion of the first patterns in e.g., [0047] of Baek.
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Alikhani in view of Baek, as applied to claim 7 above, and further in view of Stolovitzky et al. (“Stolovitzky,” US Pub. No. 2017/0212098, previously cited).
See Alikhani and Baek above.
As to claims 9-10, while Alikhani teaches performing the EBL with an electron beam resist to form the first patterns, Alikhani does not specifically teach forming nanoholes. Stolovitzky teaches in [0100] et seq., FIG. 9A is a scanning electron microscope image of a nanopillar array (such as nanopillar array 100), which shows nanopillars and nanochannels (“nanoholes”). FIG. 9B is a scanning electron image of nanochannels in the nanochannel region. The channels are 5 μm long, 50 nm deep, and 500 nm in pitch. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have nanoholes to allow the fluid to pass through the fluidic device.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable Alikhani in view of Baek, as applied to claim 7 above, and further in view of Koesdjojo et al. (“Koesdjojo,” US Pub. No. 2013/0064713, previously cited).
See Alikhani and Baek above.
As to claim 13, Alikhani does not specifically teach pouring a polymer material into the formed chip; waiting for a predetermined time until the polymer material is hardened; and inverting the hardened polymeric material. Koesdjojo teaches in e.g., [0090] et seq., the bonding agent is allowed to cool at room temperature until it becomes hard; typically the bonding agent will harden at room temperature in less than 5 minutes, more typically less than about 3 minutes, even more typically, less than about 1 minute. A disclosed working embodiment is illustrated in FIGS. 1 and 2. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the pouring, waiting and inverting steps because versatile and robust fabrication methods are needed both to make microfluidic devices more available to the research lab and the commercial market. ([0003] of Koesdjojo).
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive.
In response to applicant’s arguments on p. 6-10 of the reply, the Office respectfully disagrees. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Here, the modified combination of Alikhani and Baek teach the claimed microchannels, and the second patterns at least partially extend into the first region to overlap an edge portion of the first pattern, as explained above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORE RAMILLANO JARRETT whose telephone number is (571)272-7420. The examiner can normally be reached Monday to Friday.
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/LORE R JARRETT/Primary Examiner, Art Unit 1797
3/7/2026