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
Claims 20, 23 and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected device, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 4/7/2026.
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)(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.
Claims 1-7, 12, 13, 16, 25 and 26 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Moriyama, et al (WO 2020/196635 [IDS Reference]; will use PGPub 2022/0170826 as the official translation [also, an IDS reference]).
The applied reference has a common inventor and assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Moriyama teaches a device and method for the manipulation of cells. See paragraph [0001]. Moriyama provides for a “flow path” that is interpreted as being the same as the claimed “flow channel.” Moriyama indicates that an air bubble is introduced at the end of the path. See paragraph [0007]. Moriyama controls the volume of air, in the bubble, as a means of controlling the cell. See paragraph [0031]. Moriyama indicates that this can be used to change the cells’ relative position. See paragraph [0026].
With respect to claims 1 and 25, Moriyama appears to teach a method of using a device, wherein the method of use is consistent with the claimed method.
With respect to claim 2, Moriyama teaches that the cell attaches to the gas/liquid interface. See paragraph [0030].
With respect to claim 3, although Moriyama does not use the word “squeeze,” Moriyama provides for overlapping steps that result in a net movement of the cell. See paragraph [0026].
With respect to claims 4-6, Moriyama teaches further introducing other liquids, like buffers. See paragraph [0027]. Buffers used for biological purposes generally include inorganic salts and/or polar organic compounds.
With respect to claim 7, Moriyama uses gas to detach cells from a surface, and another gas to transport the cells by the claimed method. See paragraph [0020]. This would fulfill the claim limitation.
With respect to claims 12, 13, and 26, Moriyama describes controlling the volume of the air bubble. See paragraph [0031].
With respect to claim 16, Moriyama teaches using gas to separate the cells from their substrate. See paragraph [0020].
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 8, 9, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moriyama, et al (WO 2020/196635 [IDS Reference]; will use PGPub 2022/0170826 as the official translation [also, an IDS reference]). See the discussion of Moriyama above. Although Moriyama anticipates all of the claimed steps, there is no mention of contact time for the bubble, and the time in which contact occurs. However, since all of the other steps are anticipated, the claimed timing appears to be routine optimization that would be obvious to the ordinary artisan. There is nothing non-obvious about ensuring an appropriate amount of contact time, while also understanding that too much time can be detrimental.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9, 12, 13, 16, 17, 25 and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 12,504,353. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent provides for a device, that when used, would anticipate the claimed method. See the 35 USC 102 and 103 rejections above, as this is the patent with the above cited PGPub (PGPub 2022/0170826). Since there is no bar on double patenting rejections between inventions of different statutory categories, this rejection is reasonable.
Claims 1-9, 12, 13, 16, 17, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of copending Application No. 18/027,821 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions provide for overlapping methods of manipulating a cell’s position with gas bubbles.
Both inventions provide for methods of forming bubbles, that have a gas-liquid interface, then using these bubbles to control the position of the cell along a flow path. Although the claims appear to provide for nearly identical methods, the wording is different enough to suggest that there is some scope difference. However, since both inventions broadly teach the same method of manipulating, the claims read upon each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 12, 13, 16, 17, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 6, 8-13, and 24 of copending Application No. 18/027,822 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions provide for overlapping methods of manipulating a cell’s position with gas bubbles.
Both inventions provide for methods of forming bubbles, that have a gas-liquid interface, then using these bubbles to control the position of the cell along a flow path. Although the claims appear to provide for nearly identical methods, the wording is different enough to suggest that there is some scope difference. However, since both inventions broadly teach the same method of manipulating, the claims read upon each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-9, 12, 13, 16, 17, 25 and 26 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6-19, 21, 23 and 24 of copending Application No. 18/027,825 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions provide for overlapping methods of manipulating a cell’s position with gas bubbles.
Both inventions provide for methods of forming bubbles, that have a gas-liquid interface, then using these bubbles to control the position of the cell along a flow path. Although the claims appear to provide for nearly identical methods, the wording is different enough to suggest that there is some scope difference. However, since both inventions broadly teach the same method of manipulating, the claims read upon each other.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chen, et al (Integrative and Comparative Biology, 54, 959-968, 2014).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID W BERKE-SCHLESSEL whose telephone number is (571)270-3643. The examiner can normally be reached M-F 8AM-5:30PM.
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, Melenie Gordon can be reached at 571-272-8037. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID W BERKE-SCHLESSEL/Primary Examiner, Art Unit 1651
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