DETAILED ACTION
Notice of Pre-AIA or AIA Status and New Examiner
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Please note that the examiner for this application has changed. Please address future correspondence to Robert T. Crow (Art Unit 1683) whose telephone number is (571) 272-1113.
Amendments and Status of the Claims
2. This action is in response to papers filed 26 May 2026 in which the specification and claims 13-18 were amended, no claims were canceled, and no new claims were added. All of the amendments have been thoroughly reviewed and entered.
All previous objections and/or rejections are withdrawn.
Claims 13-18 are under prosecution.
Drawings
3. The drawings were received on 26 May 2026. These drawings are accepted.
Specification
4. The amendment filed 26 July 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
A. The specification is amended to recite magnetic particles “well controlled by the outside magnet.” The specification as originally filed contains no teaching of particles that are “well controlled” or of an “outside magnet.”
B. The specification is amended in multiple locations to recite coolant for cooling down “the substrate.” The specification as originally filed contains no teaching of cooling of the substrate.
C. The specification is amended in multiple locations to recite light conversion materials that convert “a part of the first light.” The specification as originally filed contains no teaching of conversion of “part” of the light.
D. The specification is amended to recite a current that is “transferred” to the display element. The specification as originally filed contains no teaching of “transferring” current.
E. The specification is amended to recite nanoparticles that are “kept” at the bottom of groove 14. The specification as originally filed contains no teaching of particles being “kept” anywhere.
F. The specification is amended in multiple locations to recite a “cooling channel.” The specification as originally filed contains no teaching of a cooling “channel.”
G. Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Interpretation
5. the claims are subject to the following interpretation:
A. The courts have held that “while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In addition, “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).
Therefore, the various uses recited in the claims (e.g., injecting a test sample, magnetic nanoparticles, and light conversion material; producing a detection sample; sliding and/or displacing plates; attracting the detections ample using a magnetic element; absorbing and transmitting light; heating and cooling, as well as the specifically claimed temperatures; transferring to a display element; showing detection results; etc.) fail to define additional structural elements of the claimed chip. See MPEP § 2114.
B. In addition, because the claims are drawn to “a nucleic acid detection chip,” all required structural components are required to be structurally integrated within a single chip.
C. Limitations referring to the detection and or test sample (e.g., the protein kinase of claim 14), the coolant of claim 14, and the specific light conversion materials of claim 16, refer to components that are not actually part of the claimed chip.
Claim Objections
6. Claims 13 and 18 are objected to because of the following informalities:
A. Claim 13 contains the text “sliding of the plate first time” and “sliding of the plate second time,” which appear to be typographical errors.
B. Claim 18 contains the text “through first time sliding” and through second time sliding,” which appear to be typographical errors.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
7. 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.
8. Claims 13-18 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.
This is a new matter rejection necessitated by the amendments.
A. Claim 13 (upon which claims 14-17 depend) and claim 18 are each amended to recite each of the following:
I. Light conversion materials that convert “a part of the first light.” The specification as originally filed contains no teaching of conversion of “part” of the light.
II. A “light source.” The specification as originally filed contains no teaching of a light source that is part of (i.e., structurally integrated with) a chip.
B. Claim 14 is amended to recite each of the following:
I. Light conversion materials that convert “a part of the first light.” The specification as originally filed contains no teaching of conversion of “part” of the light.
II. Coolant for cooling down “the substrate.” The specification as originally filed contains no teaching of cooling of the substrate.
C. Claims and 14 and 15 are amended to recite a “cooling channel” and coolant for cooling down “the substrate.” The specification as originally filed contains no teaching of a cooling “channel” of cooling of the substrate.
D. Claim 18 is amended to recite a current that is “transferred” to the display element. The specification as originally filed contains no teaching of “transferring” current.
9. 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.
10. Claims 13-18 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.
Claim 13 (upon which claims 14-17 depend) and 18 are each indefinite in each of the following:
A. The recitation “the groove of the substrate,” which lacks antecedent basis in the previous recitation of “a sample containing groove.”
It is noted that this recitation is also present in each of claims 14-15.
B. The recitation “the first guide hole,” which lacks antecedent basis in the previous recitation of “a hole.”
It is noted that “the first guide hole” is also recited in claims 14 and 17.
C. The recitation of “a first magnetic element.” Because the first magnetic element is listed within an active method step (i.e., “is attracted to…by a first magnetic element…), it is unclear if the first magnetic element is a required structural component of the chip.
D. The recitation of “a light source.” Because the light source is listed within an active method step (i.e., “allows a first light of a first light source”), it is unclear if the light source is a required structural component of the chip.
Prior Art
11. The following prior art is hereby made of record but not relied upon in any rejection:
A. Liu et al (U.S. Patent Application Publication No. US 2002/0155032 A1, published 24 October 2002) teach fluidic devices having channels and sliding blocks (Abstract).
B. Jovanovich et al. (U.S. Patent Application Publication No. US 2005/0161669 A1, published 28 July 2005) teach fluidic microchips (Abstract) having multiple slidable microchips (paragraph 0009).
C. Iida (U.S. Patent Application Publication No. US 2006/0292039 A1, published 28 December 2006) teaches a fluidic chip that slides into a mobile terminal (Abstract).
However, none of the cited prior art teaches all of the claimed structural limitations nor the specifically claimed arrangement of the claimed structural limitations.
Conclusion
12. No claim is allowed.
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert T. Crow whose telephone number is (571)272-1113. The examiner can normally be reached M-F 8:00-4:30.
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Robert T. Crow /Robert T. Crow/Primary Examiner Primary Examiner, Art Unit 1683 Art Unit 1683
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