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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/26/2026 has been entered.
Claim Objections
The previous claim objection is withdrawn in light of the amendment.
Claim Rejections - 35 USC § 112
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 1-2, 4-7, and 16-17 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.
Regarding claim 1, the limitation “a reagent chamber coupled to the channel” is inaccurate. The reagent chamber is coupled to the synthetic jet channel in the instant specification, while “the channel” from the limitation above is coupled to a cell source, not the reagent chamber (see Figs. 1 and 8, and the instant specification at paragraphs [0017] and [0027]).
Regarding the dependent claims 2, 4-7, and 16-17, these claims are rejected for the same reason as the base claim upon which they depend.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“an energy source … configured to heat a liquid in the synthetic jet channel to create a synthetic jet that carries the reagent towards the cells to inject the reagent into the cell” in claims 1, 4, 6, and 16-17.
“a second energy source … to generate a second synthetic jet that carries the second reagent towards a second cell held in the channel to inject the second reagent in the second cell” in claim 7.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 1, 4, 6-7, and 16-17 are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. A review of the specification as filed shows that the following appears to be the corresponding structures, materials, or acts described in the specification as filed for the following 35 U.S.C. § 112(f) limitations:
“In an example, the energy source 208 may be an inductive heater or a resistor heater. An example of a resistor heater may be a thermal inkjet (TIJ) resistor. A TIJ resistor may include a controllable circuit that includes a resistor heater. When the circuit is activated, current may flow through the resistor heater to generate heat.” (instant specification, paragraph [0024], also in paragraphs [0013], [0046], and [0060])
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Batt (US 20200070514) (previously cited) in view of Xu (US 20100160183) (previously cited) and Chung (US 20130078163) (previously cited).
Regarding claim 1, Batt discloses an apparatus (paragraph [0009]), comprising:
a channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels) shaped to hold a cell (paragraphs [0139] and [0150] “cell-based bio-inks”);
a reagent chamber (Figs. 3B and 5, element 4701 “inlet” and paragraphs [0020] and [0031]) coupled to the channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels) and configured to store a reagent (paragraphs [0037]-[0038]);
a synthetic jet channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels) extending from the reagent chamber (Figs. 3B and 5, element 4701 “inlet” and paragraphs [0020] and [0031]) and adjacent to and in parallel with (Figs. 3A and 4) the channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels), the synthetic jet channel fluidly coupled with the channel through a gap (Figs. 3A and 4, element 480 “fluid connection”; paragraphs [0012] and [0014]) in a barrier (Figs. 3A and 4, element 430 “middle region”; paragraph [0012]) separating the synthetic jet channel from the channel;
an energy source (Figs. 3A and 4; element 410 “laser output”; paragraph [0119]) located in the synthetic jet channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels) and configured to heat a liquid in the synthetic jet channel to create a synthetic jet (Figs. 3A and 4, element 475 “vapor bubble”; paragraph [0119]) that redirects the reagent towards the cell in the channel (paragraphs [0139] and [0150] “cell-based bio-inks”) at a defined velocity (paragraphs [0134]-[0135] “transient pressure wave”), the energy source directly aligned with the gap (Figs. 3A and 4, element 480 “fluid connection”; paragraphs [0012] and [0014]) in the barrier (Figs. 3A and 4, element 430 “middle region”; paragraph [0012]) and configured such that activation of the energy source redirects the reagent through the gap (Figs. 3A and 4, element 145 “ink jet”; paragraphs [0121] and [0135]).
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Batt, Fig. 3A
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Batt does not disclose:
a channel comprising an indentation shaped to hold a cell;
configured to inject the reagent into the cell
the energy source directly aligned with the indentation
[redirecting] the reagent … into the cell in the indentation.
Regarding features 1 and 3-4, Chung discloses a channel comprising an indentation shaped to hold a cell (abstract).
In the analogous art of single-cell trap arrays, it would have been obvious to one skilled in the art before the effective filing date to modify the invention of Batt with the indentation of Chung in order to hold a biological cell in place as it is being treated with chemicals (Chung, abstract).
Regarding features 2 and 4, Xu discloses [being configured] to inject the reagent into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Additionally, regarding the phrase “a defined velocity”, the defined velocity of injecting the reagent into a cell is obvious as a matter of routine optimization, because fluid pressure and fluid velocity are result-effective variables. The motivation for optimizing these result-effective variables is to transfect cells by temporarily creating pores in the cell membranes through shear forces. MPEP § 2144.05(II).
Regarding claim 2, Batt does not disclose wherein the energy source comprises a thermal inkjet resistor.
Xu discloses wherein the energy source comprises a thermal inkjet resistor (Fig. 1 and paragraphs [0053]-[0055]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Regarding claim 6, Batt discloses further comprising:
a pump (paragraphs [0046]-[0047]) inside of the reagent chamber (Figs. 3B and 5, element 4701 “inlet” and paragraphs [0020] and [0031]) to move the reagent (paragraphs [0037]-[0038]) towards the synthetic jet channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels) and the energy source (Figs. 3A and 4; element 410 “laser output”; paragraph [0119]).
Batt does not disclose: to be injected into the cell.
Additionally, Xu discloses to be injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
If it is deemed that the phrase “a pump inside of the reagent chamber” is not met by Batt, this limitation is obvious under a rearrangement of parts. Rearrangement of parts would have been obvious to one of ordinary skill in the art as an obvious matter of design choice and would not have modified the operation of the device. MPEP § 2144.04(VI)(C). It would have been obvious to one skilled in the art before the effective filing date to modify the pump to be inside the reagent chamber in order to effectively move the reagent inside the reagent chamber from the synthetic jet channel to the microfluidic printhead.
Claims 4-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Batt (US 20200070514) (previously cited) in view of Xu (US 20100160183) (previously cited) and Chung (US 20130078163) (previously cited) as applied to claim 1, further in view of Imran (US 20100051124) (previously cited).
Regarding claim 4, Batt discloses:
a plurality of synthetic jet channels (paragraph [0012] “at least one” Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels) and a plurality of energy sources (paragraph [0039]).
Batt does not disclose further comprising:
a plurality of reagent chambers, wherein each one of the plurality of reagent chambers stores a different reagent to be injected into the cell; and
wherein each one of the plurality of synthetic jet channels comprises a respective energy source to generate a respective synthetic jet.
Imran discloses a plurality of reagent chambers (Figs. 2-4, elements 40; paragraph [0023]), wherein each one of the plurality of reagent chambers (Figs. 2-4, elements 40; paragraph [0023]) stores a different reagent (paragraph [0019], Figs. 2-4, elements 41 “one or more chemical reactants”); and a plurality of synthetic jet channels (paragraph [0025]), wherein each one of the plurality of synthetic jet channels (paragraph [0025]) comprises a respective energy source (paragraphs [0025] for the synthetic jet channels and paragraph [0014] for how they work with an energy source).
In the analogous art of microfluidic bubble jet pumps, it would have been obvious to one skilled in the art before the effective filing date to modify the microfluidic printing device of modified Batt with the microfluidic reagent chambers and synthetic jet channels of Imran in order to control the amounts of each reactant being added via each energy source for subsequent chemical reactions (Imran, paragraph [0023]).
Regarding the limitations “to be injected into the cell” and “to generate a respective synthetic jet”, the manner of operating or intended use of a claimed apparatus does not patentably distinguish it from the prior art. MPEP § 2114(II). The device of modified Batt would be fully capable of operating in this manner given the structures of modified Batt’s microfluidic device with Imran’s reagent chambers (Imran, paragraph [0023]) and bubble jet pumps (Imran, paragraph [0016]).
Additionally, Xu discloses a reagent to be injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Additionally, if it is deemed that Batt does not disclose:
a plurality of synthetic jet channels
a plurality of energy sources
Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). Additionally, it would have been obvious to one skilled in the art before the effective filing date to modify the number of synthetic jet channels and energy sources to be a plurality in order to print more than one transfected cell simultaneously.
Additionally, regarding all the components of the claim, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). Additionally, it would have been obvious to one skilled in the art before the effective filing date to modify the number of synthetic jet channels to be a plurality in order to print more than one cell to be transfected simultaneously, with different reagents among the cells.
Regarding claim 5, Batt discloses wherein the reagent chamber comprises a reagent (Figs. 3B and 5, element 4701 “inlet” and paragraphs [0020], [0031], and [0037]-[0038]).
Batt does not disclose wherein the reagent chamber comprises a plurality of different reagents to be mixed before being injected into the cell.
Imran discloses wherein the reagent chamber (paragraph [0010]) comprises a plurality of different reagents (paragraphs [0016] and [0019]) to be mixed (paragraph [0016]).
In the analogous art of microfluidic bubble jet pumps, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the reagent chamber with the plurality of different reagents to be mixed of Imran in order to have a simpler setup, for ease of use, and to facilitate easier maintenance of the apparatus, so that only one reagent chamber need be used for the combination of reagents.
Regarding the limitation “before being injected into the cell”, the manner of operating or intended use of a claimed apparatus does not patentably distinguish it from the prior art. MPEP § 2114(II). The device of modified Batt would be fully capable of operating in this manner given the structures of modified Batt’s microfluidic device.
Additionally, Xu discloses a reagent before being injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Regarding claim 7, Batt discloses the reagent (paragraphs [0037]-[0038]),
the reagent chamber (Figs. 3B and 5, element 4701 “inlet” and paragraphs [0020] and [0031]),
the synthetic jet channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels),
the energy source (paragraph [0039]), and the channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels).
Batt inherently discloses:
the reagent is a first reagent
the reagent chamber is a first reagent chamber
the synthetic jet channel is a first synthetic jet channel
the energy source is a first energy source.
See citations in the above paragraph for an instance of each element, constituting at least the first instance of each element.
Batt does not disclose:
a second reagent chamber coupled to store a second reagent;
a second synthetic jet channel coupled to the second reagent chamber and the channel; and
a second energy source located in the second synthetic jet channel to generate a second synthetic jet that carries the second reagent towards a second cell held in the channel to inject the second reagent into the second cell, wherein the first reagent and the second reagent are injected simultaneously in the channel.
However, regarding features 5-7, these limitations are obvious under duplication of parts. Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). It would have been obvious to one skilled in the art before the effective filing date to modify modified Batt with the second reagent chamber, second reagent, second synthetic jet channel, second synthetic jet, and second cell in order to mass-produce the cells that have various combinations of transfected plasmids or genes and bio-print them simultaneously.
Regarding the phrase: to inject the [second] reagent into the [second] cell, Xu discloses a reagent being injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Additionally, Imran discloses: the apparatus further comprising:
a second reagent chamber (paragraph [0010]; Figs. 2-4, elements 40, any two of the three corresponding to a first and second reagent chamber) coupled to store a second reagent (paragraph [0019]; and, Figs. 2-4, purportedly elements 41-43);
a second synthetic jet channel (paragraph [0016] “connecting bubble jet pumps”) coupled to the second reagent chamber (paragraph [0010]; Figs. 2-4, elements 40, any two of the three corresponding to a first and second reagent chamber) and the channel (Figs. 3-4 between chambers 60 and 70); and
a second energy source (paragraph [0014] “heating element 72” … “can be similar to inkjet/bubble jet devices used in ink jet printers”) located in the second synthetic jet channel (paragraph [0016] “connecting bubble jet pumps”) to generate a second synthetic jet (paragraph [0016] “connecting bubble jet pumps”) that carries the second reagent (paragraph [0019]; and, Figs. 2-4, elements 41) wherein the first reagent (paragraph [0019]; and, Figs. 2-4, elements 41) and the second reagent (paragraph [0019]; and, Figs. 2-4, purportedly elements 41-43) are injected (paragraph [0023]).
Notably, if it deemed that Batt does not disclose the limitations from features 1-4, Imran also discloses these features:
wherein the reagent is a first reagent (paragraph [0010]), the reagent chamber is a first reagent chamber (paragraph [0010]), the synthetic jet channel is a first synthetic jet channel (Fig. 4, “bubble formation within the carrier fluid”), and the energy source is a first energy source (Figs. 2-4, element 72 “heating element”; paragraph [0014]).
In the analogous art of microfluidic bubble jet pumps, it would have been obvious to one skilled in the art before the effective filing date to modify modified Batt with the second components of Imran in order to mass-produce the cells that have various combinations of transfected plasmids or genes and bio-print them simultaneously.
Regarding the limitation “a second [feature]”, mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). It would have been obvious to one skilled in the art before the effective filing date to modify modified Batt with the second components in order to mass-produce the cells that have various combinations of transfected plasmids or genes and bio-print them simultaneously.
Regarding the limitation “cell”, the material or article worked upon by the apparatus does not limit the apparatus claims. MPEP § 2115. This limitation is a manner of operating or intended use of a claimed apparatus and does not patentably distinguish it from the prior art. MPEP § 2114(II). The device of modified Batt would be fully capable of operating in this manner given the structures disclosed above.
Regarding the phrase “towards a second cell held in the channel to inject the second reagent into the second cell” and “simultaneously in the channel”, the manner of operating or intended use of a claimed apparatus does not patentably distinguish it from the prior art. MPEP § 2114(II). The device of modified Batt would be fully capable of operating in this manner given the structures of modified Batt’s microfluidic device.
Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Batt (US 20200070514) (previously cited) in view of Xu (US 20100160183) (previously cited) and Chung (US 20130078163) (previously cited), as applied to claim 1 above, and further in view of Imran (US 20100051124) (previously cited) and Rubinsky (US 6403348) (newly cited).
Regarding claim 16, Batt discloses further comprising: a sensor (paragraph [0129]), the gap (Figs. 3A and 4, element 480 “fluid connection”; paragraphs [0012] and [0014]), and moving through the channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels) in a direction in parallel with (Figs. 3A and 4) the synthetic channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels).
Batt does not disclose a controller configured to:
activate the energy source in response to detecting the cell based on a signal from the sensor, the activation causing the reagent to move … into the cell as the cell is held in the indentation.
Imran discloses: [activating] the energy source based on a signal from the sensor (paragraph [0020]), the activation causing the reagent to move (paragraph [0020]).
In the analogous art of microfluidic bubble jet pumps, it would have been obvious to one skilled in the art before the effective filing date to modify the microfluidic printing device of modified Batt with the microfluidic reagent chambers and synthetic jet channels of Imran in order to control the amounts of reactant being added via an energy source for subsequent chemical reactions (Imran, paragraph [0023]).
Regarding the phrase “in response to detecting the cell”, Rubinsky discloses a sensor that detects a cell and “a controller” (col. 16, first full paragraph) that signals in response to detecting the cell (cols. 18-19, spanning paragraph).
In the analogous art of controlled electroporation, it would have been obvious to one skilled in the art before the effective filing date to modify modified Batt with a cell sensor of Rubinsky in order to trigger transfection of the detected cell (Rubinsky, cols. 18-19, spanning paragraph).
Regarding the phrase: “[moving the reagent] into the cell”, Xu discloses a reagent being injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Regarding the phrase “as the cell is held in the indentation”, Chung discloses a channel comprising an indentation shaped to hold a cell (abstract).
In the analogous art of single-cell trap arrays, it would have been obvious to one skilled in the art before the effective filing date to modify the invention of modified Batt with the indentation of Chung in order to hold a biological cell in place as it is being treated with chemicals (Chung, abstract).
Regarding claim 17, Batt discloses: further comprising: a plurality of energy sources including the energy source (paragraphs [0033]-[0034]), the plurality of energy sources arranged on a ceiling of the synthetic jet channel (Figs. 3A and 4, laser is from above the top of the synthetic jet channel), the activation (Figs. 3A and 4, element 145 “ink jet”; paragraphs [0121] and [0135]) causing the reagent (paragraphs [0037]-[0038]) to move through the gap (Figs. 3A and 4, element 480 “fluid connection”; paragraphs [0012] and [0014]) after moving through the channel (Figs. 3A and 4, element 4300 “ink channel”; paragraphs [0009]-[0010], the lower of the two middle channels) in a direction in parallel with (Figs. 3A and 4) the synthetic channel (Figs. 3A and 4, element 4700 “intermediate layer channel”; paragraphs [0009] and [0117], the upper of the two middle channels).
Batt does not disclose: a plurality of energy sources in series; and, a controller configured to: activate the plurality of energy sources in response to detecting the cell, and [causing the reagent to move] into the cell as the cell is held in the indentation.
Regarding the limitation “a plurality of energy sources in series”, rearrangement of parts would have been obvious to one of ordinary skill in the art as an obvious matter of design choice and would not have modified the operation of the device. MPEP § 2144.04(VI)(C). It would have been obvious to one skilled in the art before the effective filing date to modify the energy sources to be in series depending on the application in order to transfect more than one reagent into the cell over time.
Imran discloses: [activating] the energy source based on a signal from the sensor (paragraph [0020]), the activation causing the reagent to move (paragraph [0020]).
In the analogous art of microfluidic bubble jet pumps, it would have been obvious to one skilled in the art before the effective filing date to modify the microfluidic printing device of modified Batt with the microfluidic reagent chambers and synthetic jet channels of Imran in order to control the amounts of reactant being added via an energy source for subsequent chemical reactions (Imran, paragraph [0023]).
Regarding the phrase “in response to detecting the cell”, Rubinsky discloses a sensor that detects a cell and “a controller” (col. 16, first full paragraph) that signals in response to detecting the cell (cols. 18-19, spanning paragraph).
In the analogous art of controlled electroporation, it would have been obvious to one skilled in the art before the effective filing date to modify modified Batt with a cell sensor of Rubinsky in order to trigger transfection of the detected cell (Rubinsky, cols. 18-19, spanning paragraph).
Regarding the phrase: “[moving the reagent] into the cell”, Xu discloses a reagent being injected into the cell (Fig. 1 and paragraphs [0053]-[0055] and [0069]).
In the analogous art of inkjet gene printing, it would have been obvious to one skilled in the art before the effective filing date to modify the apparatus of modified Batt with the inkjet printing that transfects cells of Xu in order to transfect living cells with nucleic acids, proteins, molecules, nanoparticles, and/or drugs (Xu, paragraph [0011]).
Regarding the phrase “as the cell is held in the indentation”, Chung discloses a channel comprising an indentation shaped to hold a cell (abstract).
In the analogous art of single-cell trap arrays, it would have been obvious to one skilled in the art before the effective filing date to modify the invention of modified Batt with the indentation of Chung in order to hold a biological cell in place as it is being treated with chemicals (Chung, abstract).
Additionally, if it is deemed that Batt does not disclose:
a plurality of energy sources
Mere duplication of parts has no patentable significance unless a new and unexpected result is produced. MPEP § 2144.04(VI)(B). Additionally, it would have been obvious to one skilled in the art before the effective filing date to modify the number of energy sources to be a plurality in order to print more than one transfected cell simultaneously.
Response to Arguments
Applicant’s arguments, see pg. 7 of 9, filed 03/26/2026, with respect to the rejection(s) of the claims under 35 U.S.C. § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of modified Batt.
Regarding Imran, the reference does not have the specific parallelized structure recited in the instant claims (the synthetic jet channel should be adjacent and in parallel with the channel). New primary reference Batt contains this structure.
Regarding further arguments on Imran, these arguments are unpersuasive, as the defined velocity of injecting the reagent into a cell is obvious as a matter of routine optimization, because fluid pressure and fluid velocity are result-effective variables. The motivation for optimizing these result-effective variables is to transfect cells by temporarily creating pores in the cell membranes through shear forces. MPEP § 2144.05(II). A transfection process like this occurs in secondary reference Xu. Nevertheless, Imran has been relegated to a secondary reference due to its structure, as stated above.
Conclusion
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/N.G.E./Examiner, Art Unit 1799
/MICHAEL A MARCHESCHI/Supervisory Patent Examiner, Art Unit 1799
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