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 .
Status of the Claims
The Amendment filed July 23rd, 2025 has been entered. Claims 36, 38, 44-45, 48-49, and 51 have been amended. Claim 2, 8-35, 37, 41, 46-47, 50, 52-71, and 73 have been canceled. Claims 1, 3-7, and 72 have been previously withdrawn. Claims 36, 38-40, 42-45, 48-49, 51 are currently examined herein.
Status of the Rejection
Applicant’s amendments to the claims have overcome each objection and 112(b) rejections previously set forth in the Non-Final Office Action mailed May 19th, 2025.
All 35 U.S.C. § 103 rejections from the previous office action are essentially maintained and modified only in response to Applicant’s amendments.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 36, 38-40, 42-44, 48-49, and 51 are rejected under 35 U.S.C. 103 as being unpatentable over Yu (US 2007/0131554 A1, provided in IDS dated 04/04/2024) in view of Ozkan (US 2002/0031813 A1, provided in IDS dated 04/04/2024) and Turmel (Resolution of Schizosaccharomyces pombe chromosomes by field inversion gel electrophoresis. Nucleic Acids Research. 1988; 16(10), page 4727).
.
Regarding Claim 36, Yu teaches a microfluidic dielectrophoresis (DEP) sorting device (multi-sample microfluidic dielectrophoresis separating device 5 in Fig. 5 [para. 0018]), the limitation “for sorting cells” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, the separating device 5 of Yu is capable of screening specific types of cells using a proper DEP force [para. 0019]. Thus, the separating device 5 of Yu is capable of performing the claimed function above;
the microfluidic DEP sorting device comprising:
a first microchannel (primary passage 51 in Fig. 5 [para. 0018]); and
a sorting region (as illustrated in Figure 5, a sorting region comprising the primary passage 51 along with secondary passages 52 and electrodes A and B [para. 0018]) comprising at least one array of electrodes disposed in the first microchannel (as illustrated in Figure 5, electrodes A and B are disposed in the primary passage 51).
the limitation “wherein the cells are plant cells, wherein the plant cells are microspores, pollen, tetrads, embryos, microcalli, multicellular structures derived therefrom, or a combination thereof does not have patentable weight as these claims further limit the sample but fail to further limit the apparatus. A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." See MPEP 2115. Since the claims further limit the cell sample (material worked upon) but fails to limit the microfluidic DEP sorting device (by a structure being claimed), the limitations of the claim have no patentable weight.
Yu is silent on wherein at least one electrode is partially covered with a non-stick coating in order to minimize interactions between the at least one array of electrodes and cells while maintaining a sufficient electric field to sort the cells, and a timing-adjustable intervalometer operatively coupled to the electrode array, wherein the intervalometer is configured to interrupt or switch voltages and frequencies that pulses current through the electrodes, thereby causing DEP forces along the electrodes to be periodically removed or reduced at intervals.
Ozkan teaches an electrochemical cell for moving organic and inorganic substances along with patterning electrodes (abstract), and teaches at least one electrode is partially covered with a non-stick coating (electrodes for separation, such as electrode 11 in Fig. 3a [para. 0081], can be covered with a non-stick coating like agarose [paras. 0038-0039]).
Yu and Ozkan are considered analogous art to the claimed invention because they are in the same field of sorting devices for cells using electric fields. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the electrodes of Yu by having at least one electrode been partially covered with a non-stick coating, as taught by Ozkan, since it would prevent bio-organic substances, molecules and/or cells from sticking selected regions (Ozkan, [para. 0039]). The limitation “in order to minimize interactions between the at least one array of electrodes and cells while maintaining a sufficient electric field to sort the cells” is a functional recitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, coating of agarose on electrode 11 of Ozkan prevents the cells from sticking to selected regions, beneficial for the selectivity and electrochemical patterning while an electric field is applied [paras. 0031, 0039]. Thus, the agarose non-stick coating of Ozkan is capable of performing the claimed function above;
Modified Yu is silent on a timing-adjustable intervalometer operatively coupled to the at least one array of electrodes, wherein the intervalometer is configured to interrupt or switch voltages and frequencies that pulses current through the electrodes, thereby causing DEP forces along the electrodes to be periodically removed or reduced at intervals.
Turmel teaches an electrophoretic separation technique using field inversion electrophoresis (first para., page 4727), and teaches a timing-adjustable intervalometer (an intervalometer [second para., page 4727]); In addition, although Turmel does not explicitly teach the intervalometer is “operatively coupled to the at least one array of electrodes”, the intervalometer is applying the electric field across the electrophoresis device [second para., page 4727]. Thus, intervalometer must be operatively coupled to the electrodes for applying the electric field.
Modified Yu and Turmel are considered analogous art to the claimed invention because they are in the same field of electrophoretic devices. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the microfluidic DEP sorting device of modified Yu to include a timing-adjustable intervalometer operatively coupled to the electrode array, as taught by Turmel, as adding an intervalometer allows for fine control of the electric field applied, including switching the polarity (Turmel, [second para., page 4727]). The limitation “wherein the intervalometer is configured to interrupt or switch voltages and frequencies that pulses current through the electrodes, thereby causing DEP forces along the electrodes to be periodically removed or reduced at intervals” is a functional limitation. Apparatus claims cover what a device is, not what a device does [MPEP 2114(II)]. A functional recitation of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2114. In the instant case, Turmel teaches the intervalometer is configured to apply a periodic sequence of field pulse such that a forward polarity electric field is applied for a fixed period T+, followed by a second field of inversed polarity for a fixed period of time T- (Turmel, [second para. and Figure 1, page 4727]). In Figure 1 of Turmel, the three chromosomes of S. pombe (ATCC strain 2476) are clearly resolved using the following pulse sequence: T+=30s and T-=30s during the first 16h of electrophoresis and T+=3000s, T-=1200s during the next 80h of electrophoresis. Thus, the disclosed intervalometer is a timing-adjustable intervalometer, since T+ and T- are adjustable, and capable of performing the claimed function above.
Regarding Claim 38, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu is silent on wherein the non-stick coating covers a top surface of the at least one electrode, wherein each side of the at least one electrode remains uncovered.
Ozkan teaches wherein the non-stick coating covers a top surface of the at least one electrode (agarose gel 111 is spun on the top surface of electrode 11 [para. 0082]; illustrated in Figure 3b), wherein each side of the at least one electrode remains uncovered (as illustrated in Figure 3b, agarose gel 111 only covers top of electrode 11).
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the non-stick coating of modified Yu to cover a top surface of the at least one electrode, wherein each side of the at least one electrode remains uncovered, as taught by Ozkan, since it would prevent the electrode surface sticking of cells (Ozkan, [para. 0085]).
Regarding Claim 39, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu is silent on wherein a surface between neighboring electrodes is covered with the non-stick coating.
Ozkan teaches wherein a surface between neighboring electrodes is covered with the non-stick coating (agarose can be patterned on the substrate as well as the insulation to prevent sticking, see Figures 9 and 11 [paras. 0103-0104]).
It would be obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify the surface between the electrodes of modified Yu wherein a surface between neighboring electrodes is covered with the non-stick coating, as taught by Ozkan, since it would prevent bio-organic substances, molecules and/or cells from sticking to the non-conductive regions (Ozkan, [para. 0039]).
Regarding Claim 40, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu teaches one or more input channels (inlet 511 and input paths 521 in Figure 5 [para. 0018]) fluidically coupled to the first microchannel (as illustrated in Figure 5, inlet 511 and input paths 521 are fluidically coupled to the primary passage 51 [para. 0018]).
Regarding Claim 42, modified Yu teaches the microfluidic DEP sorting device of claim 40.
Yu teaches wherein the cells are introduced into the first microchannel via the one or more input channels (as illustrated in Figure 5, particulates 31, which can be cells [para. 0019], are introduced via the inlet 511 to the primary passage 51).
Regarding Claim 43, modified Yu teaches the microfluidic DEP sorting device of claim 40.
Yu teaches wherein one or more buffer fluids (a fluid is flowed into primary passage 51 via entry 511 [para. 0018, 0020]; a second fluid is also flowed into primary passage 51 via inlet paths 521 [para. 0018]) are introduced into the first microchannel via the one or more input channels (a fluid is flowed into primary passage 51 via entry 511 [para. 0018, 0020]; a second fluid is also flowed into primary passage 51 via inlet paths 521 [para. 0018]).
Regarding Claim 44, modified Yu teaches the microfluidic DEP sorting device of claim 43.
Yu teaches wherein the one or more buffer fluids comprise a sample buffer fluid (fluid in primary passage 51 from entry 511 in Figure 5 [para. 0018, 0020]) and a carrier buffer fluid (fluid flowing from input path 521 in Figure 5 [para. 0018]), wherein the sample buffer fluid is used to introduce cells into the microfluidic DEP sorting device (as illustrated in Figure 5, cells enter primary passage 51 via entry 511 via fluid from entry 511), wherein the carrier buffer fluid is used to provide hydrodynamic force and generate and laminar flow stream (fluid entering from input paths 521 flow into primary passage 51 and form a flow trace with a laminar flow effect [para. 0018]).
Regarding Claim 48, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu teaches wherein the at least one array of electrodes comprises two or more electrode arrays disposed parallel to each other in the first microchannel (as illustrated in Figure 5, Electrodes A and B are parallel to each other in the primary passage; in addition, there can be multiple electrodes can be utilized, as shown by electrodes 42 in the prior art Figure 4).
Regarding Claim 49, modified Yu teaches the microfluidic DEP sorting device of claim 48.
Yu teaches wherein a flow channel is disposed between the two or more electrode arrays (as illustrated in Figure 5, the 2nd inlet path 521 flows fluid into primary passage 51 and serves as a flow channel [para. 0018]).
Regarding Claim 51, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu teaches wherein the at least one array of electrodes is operatively coupled to the AC voltage function generator (AC power 56 is applied to electrode 42 to generate a DEP force [para. 0021]).
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Yu, Ozkan, and Turmel, as applied to claim 36 above, and in further view of Tao (Continuous Separation of Multiple Size Microparticles using Alternative Current Dielectrophoresis in Microfluidic Device with Acupuncture Needle Electrodes. Chinese Journal of Mechanical Engineering. 2016; 29(2), pages 325-331).
Regarding Claim 45, modified Yu teaches the microfluidic DEP sorting device of claim 36.
Yu teaches wherein the sorting region comprises at least two output channels (output tubes 522 in Figure 5 [para. 0018]) fluidly coupled to the first microchannel (as illustrated in Figure 5, output tubes 522 are fluidly coupled to the primary passage 51), wherein the at least two output channels branch from the first microchannels (as illustrated in Figure 5, output tubes 522 are downstream and branch away from the primary passage 51).
Yu is silent on wherein the output channels are downstream of the at least one array of electrodes.
Tao teaches a continuous separation of microparticles using dielectrophoresis (abstract), and teaches where the output channels are downstream of the electrodes (as illustrated in Figure 1 on page 326, output Branches C, D, and E are downstream of the acupuncture needle electrodes).
Modified Yu and Tao are considered analogous art to the claimed invention because they are in the same field of sorting devices for cells using dielectrophoresis. It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to rearrange the output channels of modified Yu to be downstream of the at least one array of electrodes, as taught by Tao, since a microfluidic device of this design allows for continuous separation of particles as opposed to requiring multiple steps (Tao, [third para. col. 1, page 326]).
Response to Arguments
Applicant's arguments, see Remarks pgs. 6-14, filed 07/23/2025, with respect to the 35 U.S.C 103 rejections and amended claims have been fully considered.
Applicant’s Argument #1:
Applicant argues on pages 8-13 that a timing-adjustable intervalometer in a fluid environment for sorting plant cells is significant to the present invention because it allows for the separation of whole cells without accumulation on electrodes, and that Turmel teaches a standard intervalometer with no timing-adjustment capabilities, and does not teach a timing-adjustable intervalometer in a fluid environment for sorting plant cells, instead teaching a standard intervalometer gel electrophoresis to separate chromosomes within cells. In addition, in establishing a prima facie case of obviousness under 35 U.S.C. 103, motivation must stem from some teaching, suggestion, or inference in the prior art as a whole and not from applicants’ disclosure.
Examiner’s Response #1:
Applicant’s arguments have been fully considered, but are not persuasive. First, while the intervalometer of Turmel is used with field inversion gel electrophoresis (Turmel, [first and second paras. page 4727]), Turmel further teaches the intervalometer is configured to apply a periodic sequence of field pulse such that a forward polarity electric field is applied for a fixed period T+, followed by a second field of inversed polarity for a fixed period of time T-. In Figure 1, the three chromosomes of S. pombe (ATCC strain 2476) are clearly resolved using the following pulse sequence: T+=30s and T-=30s during the first 16h of electrophoresis and T+=3000s, T-=1200s during the next 80h of electrophoresis. Thus, the disclosed intervalometer is a timing-adjustable intervalometer since T+ and T- are adjustable. In addition, one of ordinary skill in the art would consider using an intervalometer for an apparatus that performs dielectrophoresis, as the prior art of Turmel does teach using an intervalometer in an electrophoretic technique that adjusts the electric field (Turmel, [first and second paras. page 4727]).
Since Turmel teaches a timing-adjustable intervalometer for separating biological components, and the primary reference of Yu teaches a dielectrophoresis apparatus for separating/sorting cells in a fluid environment (which would include plant cells), the apparatus of modified Yu teaches amended claim 36 above without using some teaching, suggestion, or inference in the prior art as a whole and not from applicants’ disclosure.
Applicant’s Argument #2:
Applicant argues on page 13 that as secondary reference Tao does not remedy the deficiencies of Yu, Ozkan, and Turmel, as Tao also does not teach a timing-adjustable intervalometer in a fluid environment for sorting plant cells.
Examiner’s Response #2:
Applicant’s arguments have been fully considered, but are moot as outlined in the Examiner’s Response # 1 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDALL LEE GAMBLE JR whose telephone number is (703)756-5492. The examiner can normally be reached Mon - Fri 10:00-6:00 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Luan Van can be reached at (571) 272-8521. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.L.G./Examiner, Art Unit 1795
/LUAN V VAN/Supervisory Patent Examiner, Art Unit 1795