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/Restriction
Applicant’s confirmation of election without traverse of Group 1, Claims 21-26 in the reply filed on 06/17/2026 is acknowledged.
Remarks
This office action fully acknowledges Applicant’s remarks and amendments filed on 17 June 2026.
Claims 21-26 are pending.
Claims 1-20 are canceled.
Claims 27-36 are withdrawn.
No claims are newly added.
Claim 21 is amended.
Claim Rejections - 35 USC § 102
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 21-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stakenborg et al. (US 2012/0064567 A1), hereinafter “Stakenborg”.
Regarding Claim 21, Stakenborg teaches a device for detecting and/or characterizing one or more cells by the electrical properties of the cells ([0084]), the device comprising at least one electrode integrated microsieve assembly 1 (Fig. 3A and [0078]), wherein the microsieve assembly 1 comprises:
(a) a microsieve arrangement, comprising a microsieve array ([0087, 0097]), comprising one or more micropores 2 ([0078]: “State of the art techniques for fabrication of micro- and nanoholes may provide holes with almost nanometer precision.” – See also Fig. 27 and [0061].) for retaining the cells (See para. [0010], and further Figs. 6A-C showing the micropores retaining the cells 41/42. See also Fig. 4.); and
(b) a substrate 7 and an array of 3D electrodes 3 extending from the substrate 7 ([0024]: “Each region comprises a hole, at least one electrode embedded in or located on the substrate” – [0087]: “at least one electrode 3 electrically associated with the hole 2, which may be embedded in or located on the substrate 7, e.g. deposited on top of the substrate 7” – As Stakenborg discusses the electrode as being deposited on top of the substrate in preferred embodiments, said electrode is interpreted as a 3D electrode extending from the substrate. – See also Fig. 4. – The substrate may also be interpreted as the conductive paths 12 from which the electrodes extend.), wherein the one or more micropores of the microsieve arrangement are embedded by the electrodes of the array of 3D electrodes (See Fig. 4 and [0087]: “Each region 10 further comprises at least one electrode 3 electrically associated with the hole 2, which may be embedded in or located on the substrate 7, e.g. deposited on top of the substrate 7, such that, in use, the at least one electrode 3 is electrically accessible by a particle present in or on the hole 2.”),
characterized in that a design of the microsieve arrangement is provided such that the microsieve arrangement is pluggable with the array of 3D electrodes of the substrate (As para. [0087] discusses the electrode being deposited within the pore, the pores are interpreted as being “pluggable” with the array of 3D electrodes of the substrate as “pluggable” is broadly interpreted herein as merely being able to accept a guest into the pore. – Given that the prior art of Stakenborg satisfies the same design elements of the device as presently claimed (as given by the recitations a), b) of the claim; and wherein the claims do not provide further structure thereto in which Stakenborg provides “a design…” commensurate to that claimed in as much as required and recited herein), the device of Stakenborg is commensurately interpreted as being a pluggable design given that no structural particulars to the “a design” are provided, instead providing a mere functional conclusion expected to identically arise from two substantially identical structures.)
as in Claim 21.
Regarding Claim 22, the prior art meets the limitations of Claim 21 as discussed above. Further, Stakenborg provides the device of Claim 21 wherein the microsieve arrangement is a disposable microsieve arrangement comprising a dielectric material ([0118]) and wherein the substrate comprising an array of 3D electrodes is a re-usable substrate (Given their commensurate structure as in Claim 21, the microsieve arrangement of Stakenborg is fully capable of being disposed of while the dielectric electrode material is fully capable of re-use. The materials may be separated by physical removal of each electrode 3 (Fig. 4), or by other methods such as melting down and separating the materials. Further, re-use/disposal of either the microsieve arrangement or the substrate does not necessitate or preclude re-use/disposal of the respective pieces independent of what is done with another piece. Limitations based on the intended use of a structure do not confer patentability if the prior art is capable of performing the same function – see MPEP 2111.02(II).), as in Claim 22.
Regarding Claim 23, the prior art meets the limitations of Claim 21 as discussed above. Further, Stakenborg provides the device of Claim 21 wherein the microsieve arrangement is connected to the substrate such that the array of 3D electrodes is configured to form an electric field in at least one micropore of the microsieve arrangement (Paras. [0085, 0098] discuss electric field generation by energizing the electrodes.), as in Claim 23.
Regarding Claim 24, the prior art meets the limitations of Claim 21 as discussed above. Further, Stakenborg provides the device of Claim 21 wherein the electrodes of the array of 3D electrodes are arranged in parallel to each other (Fig. 3A shows the electrodes 3 as arranged in parallel.), as in Claim 24.
Regarding Claim 25, the prior art meets the limitations of Claim 21 as discussed above. Further, Stakenborg provides the device of Claim 21 wherein the microsieve arrangement is detachably connected to the substrate (Given the commensurate arrangement of pluggable pores and embedded electrodes therein in Stakenborg commensurate with that of the instant claims, the microsieve arrangement of Stakenborg is commensurately detachably connected to the substrate. Given an applied force, the electrodes 3 are fully capable of being removed from the substrate 7, as seen through Fig. 4.), as in Claim 25. If Applicant desires to provide a particular structure(s)/mechanism that affords such “detachable” aspect then Applicant is invited to claim the added structure(s)/mechanism therefor.
Regarding Claim 26, the prior art meets the limitations of Claim 21 as discussed above. Further, Stakenborg provides the device of Claim 21 wherein the microsieve arrangement comprises a plurality of slots arranged such that each electrode of the array of 3D electrodes can be received into a respective slot ([0006]: “at least one electrode electrically associated with the hole and embedded in or located on the substrate” – As the electrodes 3 are taught as embedded in the substrate, there must necessarily exist a corresponding slot for receiving the electrode so as to achieve such embedding, and such as further seen through Fig. 4.), as in Claim 26.
Response to Arguments
35 USC 112(b)
Applicant’s amendments sufficiently overcome those rejections of Claims 21-26 as being indefinite under 35 USC 112(b) as set forth by the previous office action. As such, those rejections of Claims 21-26 under 35 USC 112(b) are withdrawn herein.
35 USC 102
Applicant argues on the alleged grounds that the “pluggable” designation given to the microsieve arrangement in Claim 21 sufficiently requires two separate parts which mate in a “pluggable” fashion, and that two separate mating/pluggable parts are not present in Stakenborg.
Applicant’s arguments are not persuasive because Applicant’s disclosure, including the cited sections of the specification in Applicant’s remarks, are not sufficient to define what is meant by “pluggable”. The specification discusses the parts being pluggable, but fails to describe the particular structures or mechanisms responsible therefor. Further, para. [0048] (of Applicant’s instant pre-grant publication) describes both of the microsieve and the electrodes as being pluggable, thereby further rendering unclear what is meant by the pluggable aspect in Claim 21.
Applicant’s instant pre-grant publication para. [0067] recites “...openings at the backside of the polymeric microsieve, alignment of these openings are then an exact match with the openings in the microsieve, hence to form a pluggable assembly. In other words, openings permit ease of engagement and disengagement of two components.” wherein the complementary shape of the electrodes with the openings of the microsieve is discussed; however, the insertion-type mating is not particularly discussed, merely requiring the electrode to match the shape of the microsieve openings. As can be seen through Stakenborg Fig. 4, the electrodes 3 fit identically within their respective openings; wherein despite the reference having no explicit mention thereof, such arrangement satisfies the complementary shape “pluggability” as claimed, and commensurately offers the benefits of easier disassembly as one need only pull the electrode 3 from its socket.
Construction of “Pluggable”
Similarly as above, Applicant argues that the “pluggable” aspect of Claim 21 describes mechanical and electrical mating of separate components, not merely the possibility of being able to accept an element in a pore. However, as discussed above, the specification does not sufficiently provide for Applicant’s narrow definition of “pluggable” argued here. As such, the adjective “pluggable” is given its broadest reasonable interpretation – MPEP 2111.
Applicant further contends that the Claim 22 language reciting the microsieve as disposable and the electrodes as re-usable supports their being separate attachable/detachable components. To this end, Applicant asserts that Examiner’s “intended use” and “capable of” rationale does not satisfy the allegedly claimed two-part system. However, Examiner maintains that the electrodes of Stakenborg are commensurately capable of being re-used while the microsieve is disposed of. The electrodes of Stakenborg are commensurately formed as a complementary shape to an opening on a micropore of the microsieve, wherein an applied force (or other means of removal such as melting down and separating) is capable of removing the electrode material for re-use while the microsieve material is disposed of. As applicant has not provided the particular structure/mechanism responsible for the pluggability, and instead merely refers to the overall microsieve as being “pluggable” in Claim 21, the interpretation of such pluggability as being a mere capability/intended use is maintained. Applicant is suggested to provide the particular mechanism of pluggability beyond mere shape complementarity so as to overcome Stakenborg.
Given that the prior art of Stakenborg satisfies the same “design” elements of the device as presently claimed (as given by the recitations a), b) of the claim; and wherein the claims do not provide further structure thereto in which Stakenborg provides “a design…” commensurate to that claimed in as much as required and recited herein), the device of Stakenborg is commensurately interpreted as being a pluggable design given that no structural particulars to the “a design” are provided, instead providing a mere functional conclusion expected to identically arise from two substantially identical structures.) Further to this, Applicant’s arguments are not persuasive as they fail to provide a structural distinction between that of the claims and the prior art.
Thus, in view of the discussions above, Examiner maintains the rejection of Claims 21-26 under 35 USC 102 as being anticipated by Stakenborg.
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 BENJAMIN KASS whose telephone number is (703)756-5501. The examiner can normally be reached Monday - Friday from 9:00 A.M. to 5:00 P.M. EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles Capozzi, can be reached at telephone number (571)270-3638. The fax phone number for the organization where this application or proceeding is assigned is (571)273-8300.
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/B.J.K./Examiner, Art Unit 1798
/NEIL N TURK/Primary Examiner, Art Unit 1798
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