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 .
Response to Arguments
Applicant's arguments filed April 16, 2026 have been fully considered but they are not persuasive. Applicant has amended independent claims 1, 11, and 20 to recite a sample chip that is disposable, and argued that reference to Lin et al., cited in the previous Office Action does not anticipate the claims. The Examiner respectfully disagrees.
With respect to Applicant’s arguments regarding the sample chip being disposable, the Examiner first notes that being disposable is not a structural limitation of the claim. The Examiner contends that any device or component of a device can be viewed as disposable as a user can choose to discard a device at any point in time. As such, Applicant’s arguments regarding the sample chip being disposable are not persuasive.
With respect to Applicant’s arguments regarding a single block of material, the Examiner notes that reference to Lin et al., teach the microchambers and microfluidic channels being structural elements of a housing (paragraph 0065, figures 1B, 1C #140) which made of a single block of material. Applicant has also included arguments regarding the thin film, microheaters, and temperature sensors taught by reference to Lin et al. The Examiner contends that those arguments are not commensurate with the scope of the claims as the instant claims do not recite thin films, microheaters, and temperature sensors. Therefore, in light of the teachings of the prior art, and the arguments provided here, the Examiner contends that the limitations of the instant claims are taught by the references cited below, thus the claims are not in condition for allowance.
Claim Interpretation
Content of Specification
(k) CLAIM OR CLAIMS: See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p).
The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”.
For claims 1-20, the Examiner notes that the phrase “configured to” does not impart structure to the claimed elements but instead represents the intended use of those elements. Also, the Examiner notes that a differential scanning calorimeter is not a required element as the claim is directed to a sample chip, and the sample chip does not comprise a differential scanning calorimeter.
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.
Claims 7-9 and 17-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
For claims 7 and 17, the phrase “about 0.5 mm to about 1.5 mm is indefinite as the Examiner is unable to determine the metes and bounds of the term “about.” The instant specification does not provide a definition for “about” thus the Examiner is unable to determine a deviation from the range of 0.5 mm to 1.5 mm that encompasses the term about.
For claims 9 and 19, the phrase “about 10 µm to about 40 µm is indefinite as the Examiner is unable to determine the metes and bounds of the term “about.” The instant specification does not provide a definition for “about” thus the Examiner is unable to determine a deviation from the range of 10 µm to 40 µm that encompasses the term about.
Claim 8 recites the limitation "the fluidic channel" in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that “the fluidic channel” is inconsistent with the “microfluidic channel” recited in claim 3, and requests Applicant amend the claim so that the language with respect to the microfluidic channel is consistent.
Claim 18 recites the limitation "the fluidic channel" in line 2. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that “the fluidic channel” is inconsistent with the “microfluidic channel” recited in claim 3, and requests Applicant amend the claim so that the language with respect to the microfluidic channel is consistent.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-3, 5, 6, 8, 11-13, 15, 16, 18, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lin et al., (US 2014/0092935).
For claim 1, Lin et al., teach a sample chip comprising a body (figure 1B #140) having a first surface (paragraph 0070, figure 1B, top surface of #140), a second surface (paragraph 0070, figure 1B, bottom surface of #140), and microchambers (internal void, paragraph 0065) disposed between the first and second surfaces and extending from a port on the first surface (paragraph 0065). The Examiner first notes that being disposable is not a structural limitation of the claim, and that any device or component of a device can be viewed as disposable as a user can choose to discard a device at any point in time. As such, the sample chip of Lin et al., is being interpreted as being disposable.
For claim 2, Lin et al., teach a sample chip comprising a second port for the microchambers (paragraph 0065).
For claim 3, Lin et al., the internal void as a microfluidic channel (paragraph 0065).
For claim 5, Lin et al., teach the sample chip made of PDMS (paragraph 0065).
For claim 6, Lin et al., teach the sample chip comprising a layer of material (thin film) formed on the second surface wherein the material has a thermal conductivity greater than the thermal conductivity of the body (paragraphs 0071, 0072). The Examiner notes that the thin film comprises a chromium/gold layer which exhibits a different thermal conductivity compared to PDMS.
For claim 8, Lin et al., teach the microfluidic channel having a chamber along the length of the fluidic channel (paragraph 0065).
For claim 11, Lin et al., teach a sample chip comprising a body (figure 1B #140) having a first surface (paragraph 0070, figure 1B, top surface of #140), a second surface (paragraph 0070, figure 1B, bottom surface of #140), and microchambers (internal void, paragraph 0065) disposed between the first and second surfaces and extending from a port on the first surface (paragraph 0065). Lin et al., also teach the second surface being planar (figure 1B, bottom surface of #140). The Examiner notes that being disposable is not a structural limitation of the claim, and that any device or component of a device can be viewed as disposable as a user can choose to discard a device at any point in time. As such, the sample chip of Lin et al., is being interpreted as being disposable.
For claim 12, Lin et al., teach a sample chip comprising a second port for the microchambers (paragraph 0065).
For claim 13, Lin et al., the internal void as a microfluidic channel (paragraph 0065).
For claim 15, Lin et al., teach the sample chip made of PDMS (paragraph 0065).
For claim 16, Lin et al., teach the sample chip comprising a layer of material (thin film) formed on the second surface wherein the material has a thermal conductivity greater than the thermal conductivity of the body (paragraphs 0071, 0072). The Examiner notes that the thin film comprises a chromium/gold layer which exhibits a different thermal conductivity compared to PDMS.
For claim 18, Lin et al., teach the microfluidic channel having a chamber along the length of the fluidic channel (paragraph 0065).
For claim 20, Lin et al., teach a sample chip comprising a body (figure 1B #140) having a first surface (paragraph 0070, figure 1B, top surface of #140), a second surface (paragraph 0070, figure 1B, bottom surface of #140), and microchambers (internal void, paragraph 0065) disposed between the first and second surfaces and extending from a port on the first surface (paragraph 0065). Lin et al., also teach the internal void as a single chamber having a uniform cross-sectional area along its length (paragraph 0096). The Examiner notes that being disposable is not a structural limitation of the claim, and that any device or component of a device can be viewed as disposable as a user can choose to discard a device at any point in time. As such, the sample chip of Lin et al., is being interpreted as being disposable.
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.
Claim(s) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., (US 2014/0092935).
Regarding claims 4 and 14, Lin et al., teach a sample chip identical to that of claim 3 in an embodiment that does not require a microfluidic channel having a serpentine path.
However, in a separate embodiment, Lin et al., teach a microfluidic channel having a serpentine path which provides the advantage of improving thermal isolation by increasing the number of thermopile junctions (paragraph 0073). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Lin et al., to include a microfluidic channel having a serpentine flow path in order to improve thermal isolation by increasing the number of thermopile junctions as taught by Lin et al.
Claim(s) 7, 10, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., (US 2014/0092935) in view of Monaselidze et al., (WO 2017/122174).
Regarding claims 7 and 17, Lin et al., do not teach a sample chip wherein the body has a thickness ranging from 0.5 mm to 1.5 mm.
Monaselidze et al., teach a differential scanning microcalorimeter comprising an upper end (body) having a thickness ranging from 0.5 mm to 1mm (paragraphs 0066, 0067). The Examiner is reading this combination as a change in size which would have been obvious to one of ordinary skill in the art (see MPEP 2144.04 III A). The MPEP states that where the only difference between the prior art and the claims is a recitation of relative dimensions, and the claimed device would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device (MPEP 2144.04 III A). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Lin et al., in view of Monaselidze et al., wherein the body has a thickness ranging from 0.5 mm to 1.5 mm as changes in size require only routine skill in the art.
Regarding claim 10, Lin et al., do not teach a seal secured to the first surface of the body.
Monaselidze et al., teach a differential scanning microcalorimeter comprising a channel sealer that is utilized to seal channels in the microcalorimeter (paragraph 0061). Monaselidze et al., teach that it is advantageous to provide a channel sealer as a means of preventing fluid escape and to maintain pressure within the channel (paragraph 0061).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Lin et al., to provide a seal on the first surface of the body in order to prevent fluid escape and to maintain pressure in the channel as taught by Monaselidze et al.
Claim(s) 9 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al., (US 2014/0092935) in view of Linder et al., (US 2009/0266421).
Regarding claims 9 and 19, Lin et al., do not teach a microfluidic channel having a volume ranging from 10 to 40 µl.
Linder et al., teach a microfluidic system wherein the volume of the microfluidic channel ranges from less than 50 µl to less than 1 µl (paragraph 0123). The Examiner is reading this combination as applying a known technique to a known device to yield predictable results which would have been obvious to one of ordinary skill in the art (MPEP 2141 III D). Reference to Linder et al., teach that a microfluidic system may have any suitable volume for carrying out a chemical or biological process, thus one of ordinary skill in the art would have recognized that a microfluidic channel volume can be utilized based on the chemical or biological reaction being performed by the device. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify Lin et al., in view of Linder et al., to form a microfluidic channel having a volume ranging from less than 50 µl to less than 1 µl as applying a known technique to a known device to yield predictable results requires only routine skill in the art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6.
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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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/DWAN A GERIDO/Examiner, Art Unit 1797 /LYLE ALEXANDER/Supervisory Patent Examiner, Art Unit 1797
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