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 .
Claim Objections
Claim 7 is objected to because of the following informalities:
Regarding claim 7, in line 9, the phrase “wherein the reagent” should be “wherein the first reagent”.
Appropriate correction is required.
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 … 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, and 6.
“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, and 6-7 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, 4-5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Imran (US 20100051124) in view of Chung (US 20130078163).
Regarding claim 1, Imran discloses an apparatus, comprising:
a channel (Figs. 3-4 between chambers 60 and 70);
a reagent chamber (paragraph [0010]) coupled to the channel (Figs. 3-4 between chambers 60 and 70) to store a reagent (paragraph [0010]);
a synthetic jet channel (Fig. 4, “bubble formation within the carrier fluid”) coupled to the channel (Figs. 3-4 between chambers 60 and 70) and the reagent chamber (paragraph [0010]), the synthetic jet channel (Fig. 4, “bubble formation within the carrier fluid”) fluidly coupled with the channel (Figs. 3-4 between chambers 60 and 70) through a gap in a barrier (annotated Fig. 4) separating the synthetic jet channel from the channel (annotated Fig. 4); and
an energy source (Figs. 2-4, element 72 “heating element”; paragraph [0014]) located in the synthetic jet channel (Figs. 3-4 space comprising chambers 70 and 80 and channel in-between) to heat a liquid in the synthetic jet channel to create a synthetic jet (paragraph [0014]).
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Imran, annotated Fig. 4
Imran does not disclose:
a channel comprising an indentation to hold a cell;
the synthetic jet channel coupled between the channel and the reagent chamber; and
the energy source directly aligned with the indentation through the gap in the barrier.
Regarding feature 1, Chung discloses an indentation 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 Imran with the indentation of Chung in order to hold a biological cell in place as it is being treated with chemicals (Chung, abstract).
Regarding feature 2, 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 modified Imran with the format of the apparatus as claimed in order to draw reagents through the synthetic jet channel to be pumped to the channel containing an indentation holding a cell so that the cell be grown on aliquots of medium.
Regarding feature 3, 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 modified Imran with the format of the apparatus as claimed in order to have the energy source directly aligned with the indentation through the gap in the barrier so as to propel chemical reagents directly from the bubble jet pump (Imran, claim 1) to the trapped cell in order to expose the cells to chemical solutions and manipulation of the cells (Chung, paragraph [0011]).
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 Imran would be fully capable of operating in this manner given the structures disclosed above.
Regarding the limitations “to hold a cell” and “that carries the reagent towards the cell to inject the reagent 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 Imran would be fully capable of operating in this manner given the structures of Imran’s microfluidic device.
Regarding claim 2, Imran discloses wherein the energy source comprises a thermal inkjet resistor (paragraph [0014] “heating element 72” … “can be similar to inkjet/bubble jet devices used in ink jet printers”).
Regarding claim 4, 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).
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 Imran would be fully capable of operating in this manner given the structures of Imran’s microfluidic device with a sample input (Imran, paragraph [0016]), reagent chambers (Imran, paragraph [0023]), and bubble jet pumps (Imran, paragraph [0016]).
Regarding claim 5, Imran discloses wherein the reagent chamber (paragraph [0010]) comprises a plurality of different reagents (paragraphs [0016] and [0019]) to be mixed (paragraph [0016]).
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 Imran would be fully capable of operating in this manner given the structures of Imran’s microfluidic device.
Regarding claim 7, Imran discloses: 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]), 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 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]).
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).
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 Imran 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 Imran would be fully capable of operating in this manner given the structures of Imran’s microfluidic device.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Imran (US 20100051124) in view of Chung (US 20130078163) as applied to claim 1, in view of McGuinness (US 20160334323).
Regarding claim 6, Imran discloses the reagent chamber (paragraph [0010]) moving towards the synthetic jet channel (Figs. 3-4 space comprising chambers 70 and 80 and channel in-between) and energy source (Figs. 2-4, element 72 “heating element”; paragraph [0014]).
Imran does not disclose a pump inside of the reagent chamber to move the reagent towards the synthetic jet channel and the energy source to be injected into the cell.
McGuinness discloses a pump (paragraph [0033]; and, Fig. 2, element 202 “pump”) inside of the reagent chamber (paragraph [0033]; and, Fig. 2, element 200 “source reservoir”) to move the reagent (paragraph [0033]).
In the analogous art of microfluidic sensing device, it would have been obvious to one skilled in the art before the effective filing date to modify the invention of Imran with the pump of McGuinness in order to draw fluid and particles from the source reservoir along channel (McGuinness, paragraph [0033]).
Regarding the limitation “to be 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 Imran would be fully capable of operating in this manner given the structures of Imran’s microfluidic device.
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 Imran would be fully capable of operating in this manner given the structures disclosed above.
Double Patenting
The nonstatutory double patenting rejection is withdrawn, see below.
Additional Prior Art References
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure.
Batt (US 20200070514) – This invention is a system and method for laser induced forward transfer with a microfluidic chip print head.
Response to Arguments
Applicant’s arguments filed 11/04/2025 have been fully considered but they are not persuasive.
Regarding primary reference Xu and the non-statutory double patenting rejection over Govyadinov, these rejections have been withdrawn in view of the amendments, as the prior art required to reject the claim limitations does not provide a solid motivation or suggestion to be combined. However, the rejections under primary reference Imran remain for the reasons provided below.
Regarding Applicant remarks, pg. 5 of 9, the remarks regarding the previous claim objections have been noted.
Regarding Applicant remarks, pg. 5 of 9, the non-statutory double patenting rejection is withdrawn for the reasons given above.
Regarding Applicant remarks, pg. 7 of 9, Chung discloses an indentation for holding a cell, as claimed. The remaining limitations are rejected under Imran. Additionally, Imran discloses a synthetic jet channel coupled to the channel and the reagent chamber. For the limitation, “a synthetic jet channel coupled between the channel and the reagent chamber”, rearrangement of parts is obvious, per the Office Action’s motivation statement above and MPEP § 2144.04. Imran discloses an energy source located in the synthetic jet channel (Imran, Figs. 2-4, element 72 “heating element”; paragraph [0014]). Again, rearrangement of parts is obvious for the limitation “directly aligned with the indentation through the gap in the barrier”, and motivation for this format is given above.
Conclusion
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.
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/N.G.E./Examiner, Art Unit 1799
/MICHAEL A MARCHESCHI/Supervisory Patent Examiner, Art Unit 1799