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 .
DETAILED ACTION
1. The Applicant’s response to the office action filed on November 06, 2025 is acknowledged.
Status of the Application
2. Claims 1-8 are pending under examination. Claims 9-11 were previously withdrawn from further consideration as being drawn to nonelected group. The Applicant’s arguments have been fully considered and found persuasive for the following reasons. While incorporating the limitations from claim 8, the amendment introduces new limitation into claim 1. The action is made Final necessitate by the amendment.
Response to Arguments:
3. The objection to the specification has been withdrawn in view of the amendment.
4. The rejection of claims under 35 USC 103 as being unpatentable over Yoshimura et al. in view of Goldstein et al. has been withdrawn in view of the amendment.
New Rejections Necessitated by the Amendment
Claim Objection
5. The disclosure is objected to because of the following informalities:
Claim 8 is objected as a duplicate claim of claim 1.
Applicant is advised that should claim 1 be found allowable, claim 8 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). Appropriate correction is required.
Claim Rejections - 35 USC § 103
6. 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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (WO 2018/148700) in view of Husain et al. (US 2016/0045884).
Fan et al. teach a method of claim 1, 8, for single-cell RNA comprising: aligning a microwell array (larger-sized microwells) on top of a single cell-trapping (nanowell) array (cell-diameter sized microwells), loading a plurality of cells into the nanowell array (page 7, paragraph 5, fig. 9, example 5 on page 22);
inverting the aligned arrays so that the microwell array is beneath the nanowell array and so that the loaded cells from nanowells are transferred into the microwells by gravity (page 7, paragraph 5, fig. 9, example 5 on page 22);
loading a plurality of barcoded beads into the microwells so that a single bead occupies each cell-loaded microwell (page 7, paragraph 5, fig 9, example 5 on page 22);
capturing RNA from cells and retrieving RNA-loaded beads (page 7, paragraph 5, fig. 9, example 5 on page 22);
and sequencing the captured RNA (example 7 on page 23).
With reference to claims 2-3, Fan et al. teach the microwell array comprises wells having a 50um diameter and nanowells have a diameter of 20um (page 3, line 23-33).
With reference to claims 6-7, Fan et al. teach loading plurality of second cell type (page 14, line 16-20).
However, Fan et al. did not teach dielectrophoresis (DEP) and applying electric filed to trap single cells by positive DEP.
Husain et al. teach a method of claims 1-8, for capturing single cells comprising capturing single cells with a capture chip, wherein the capture chip comprises multi-well through hole chip comprising cell-sized dimples or wells that allow single cell capture and applying electric field to the array to trap single cells into cell-sized wells by positive electrical charge to attract the cells through conductive medium, wherein the conductive medium is DEP (para 0004-0009, 0020-0029, 0118-0119).
It would have been prima facie obvious to one skilled in the art before the effective filing date of the invention to modify the method of Fan et al. with the application of positive dielectrophoresis as taught by Husain et al. to develop an improved method for capturing single cells. The ordinary person skilled in the art would have motivated to combine the method of Fan et al. with positive DEP as taught by Husain et al. and have a reasonable expectation of success that the combination would improve the method because Husain explicitly taught applying positive electrical charge sufficient to attract cells from a cell suspension to move a single cell to the dimples or wells of a capture array (para 0004-0009, 0119) and such a modification of the method is considered obvious over the cited prior art.
Conclusion
No claims are allowable.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 SURYAPRABHA CHUNDURU whose telephone number is (571)272-0783. The examiner can normally be reached 8.00am-4.30pm.
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Suryaprabha Chunduru
Primary Examiner
Art Unit 1681
/SURYAPRABHA CHUNDURU/Primary Examiner, Art Unit 1681