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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-9, drawn to a dielectric spectroscopy method, in the reply filed on 01/07/2026 is acknowledged.
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 1-9 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.
Claims 1-9 do not clearly set forth the metes and bounds of the patent protection desired. Claim 1 is unclear since the claim does not set forth any steps involved in the method. For example, the limitation “translocating a biological cell [...] while the biological cell experiences at least one RF field of at least 700 MHz provided via an RF input port to the coplanar waveguide; determining an amplitude change and a phase change [...] due to the translocating biological cell to determine an internal state or a morphological state of the biological cell” appears to be a descriptive statement defining the result to be achieved, without providing method steps. For this reason, dependent claims relating to the limitation is unclear. A claim is indefinite where it merely recites a use without any active, positive steps delimiting how this use is actually practiced.
Claim 6 is unclear reciting “wherein the coplanar waveguide is configured as a multi-mode coplanar waveguide by providing a tapered transition electrode”, because it is unclear what method step(s) and/or structural configuration are being claimed.
Regarding claim 9, the limitation “detecting apoptotic cell death of the biological cell if the determined phase change is [...]” renders the claim indefinite because the limitation appears to be an optional step; and it is unclear whether the limitation is part of the claimed invention.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-6, 8 and 9 is/are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Wang et al. (US 2015/0035546).
Regarding claim 1, Wang et al. teach:
1. A dielectric spectroscopy method (¶ 0009+), the method comprising:
translocating a biological cell (e.g., 130, 132) through a micropore or channel (e.g., 120) embedded in a substrate and interfaced with a coplanar waveguide (e.g., 140, 142), at least one RF field provided via an RF input port to the coplanar waveguide (e.g., Port 1 & ¶ 0030+);
performing a time domain measurement of at least one RF signal reflected from or transmitted to a device under test (DUT) (¶ 0034); and
determining an amplitude change and a phase change based on the reflected or transmitted at least one RF signal (¶ 0035, 0046).
Regarding claim 1, Wang et al. meet all the structural limitations recited by the instant invention. Applicants’ preamble recites “label-free, single biological cell dielectric spectroscopy”. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With regard to limitations in claims 1-4, 6, 8 and 9 (e.g., translocating a biological cell [...] while the biological cell experiences at least one RF field of at least 700 MHz provided via an RF input port to the coplanar waveguide; determining an amplitude change and a phase change [...] due to the translocating biological cell to determine an internal state or a morphological state of the biological cell, etc.), these claim limitations are considered process or intended use limitations. It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. Further, reciting “configured to” without identifying any structural differences between the structure in the claims and the structure disclosed by the prior art does not further limit the claims.
Regarding claim 5, Wang et al. teach: 5. The dielectric spectroscopy method according to claim 1, wherein the coplanar waveguide is configured as a multi-mode coplanar waveguide (¶ 0004).
Claim(s) 1-9 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Mariam et al. (“Dielectric Spectroscopy Characterization within a Microfluidic Device based on Open-Ended Coplanar Waveguide,” 2020 14th European Conference on Antennas and Propagation (EuCAP), Date of Conference: 15-20 March 2020).
Regarding claim 1, Mariam et al. teach:
1. A dielectric spectroscopy method (Abstract+), the method comprising:
translocating a biological cell (Abstract, I. Introduction+) through a micropore or channel (see Fig. 1 for example) embedded in a substrate and interfaced with a coplanar waveguide (see e.g., B. Principle and method), at least one RF field provided via an RF input port to the coplanar waveguide (e.g., coplanar wave guide probe, Fig. 1 & B. Principle and method);
performing a time domain measurement of at least one RF signal reflected from or transmitted to a device under test (DUT) (see e.g., II. Dielectric characterization, III. Measurement results); and
determining an amplitude change and a phase change based on the reflected or transmitted at least one RF signal (see e.g., III. Measurement results, IV. Conclusion).
Regarding claim 1, Mariam et al. meet all the structural limitations recited by the instant invention. Applicants’ preamble recites “label-free, single biological cell dielectric spectroscopy”. A preamble is generally not accorded any patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
With regard to limitations in claims 1-4, 6, 8 and 9 (e.g., translocating a biological cell [...] while the biological cell experiences at least one RF field of at least 700 MHz provided via an RF input port to the coplanar waveguide; determining an amplitude change and a phase change [...] due to the translocating biological cell to determine an internal state or a morphological state of the biological cell, etc.), these claim limitations are considered process or intended use limitations. It has been held that to be entitled to weight in method claims, the recited structure limitations therein must affect the method in a manipulative sense, and not to amount to the mere claiming of a use of a particular structure. Further, reciting “configured to” without identifying any structural differences between the structure in the claims and the structure disclosed by the prior art does not further limit the claims.
Regarding claims 5-7, Mariam et al. teach:
5. The dielectric spectroscopy method according to claim 1, wherein the coplanar waveguide is configured as a multi-mode coplanar waveguide (see e.g., B. Principle and method).
6. The dielectric spectroscopy method according to claim 1, wherein the coplanar waveguide is configured as a multi-mode coplanar waveguide by providing a tapered transition electrode (see e.g., B. Principle and method & Fig. 1).
7. The dielectric spectroscopy method according to claim 6, wherein the tapered transition electrode is tapered off toward the micropore or the channel (see Fig. 1 for example).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEAN KWAK whose telephone number is (571)270-7072. The examiner can normally be reached M-TH, 4:30 am - 2:30 pm EST.
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/DEAN KWAK/Primary Examiner, Art Unit 1798
DEAN KWAK
Primary Examiner
Art Unit 1798