DETAILED ACTION
In application filed on 04/12/2023, Claims 1-19 are pending. The claim set submitted on 04/12/2023 is considered because this is the most recent claim set. Claims 1-18 are considered in the current office 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/12/2023, 04/19/2024, 06/13/2024, 09/25/2025 and 11/21/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 12/22/2025 is acknowledged. Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/22/2025.
Group I, Claims 1-19 are considered on the merits below.
Claim Rejections - 35 USC § 112
Claims 5 and 15 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.
Claims 5 and 15 recites the limitation "a particle-binding substance" in the Claims. However, Claim 1 recites “a substance that captures bioparticles”.
Applicant should provide clarification on whether the "a particle-binding substance" in Claims 5 and 15 and “a substance that captures bioparticles” in claim 1 the same?
For the purpose of expedited prosecution, the limitation "a particle-binding substance" is interpreted by the Examiner as “the substance that captures bioparticles”.
Claim Rejections - 35 USC § 103
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 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 1 and 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over by Tang et al. (US20060160243A1) in view of Becker et al. (US20190134533A1, submitted in IDS on 04/19/2024).
Regarding Claim 1, Tang teaches a sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) comprising:
a bioparticle-capturing module (referred to as a substrate [Para 0017-0018; Fig. 1, ref. 11]) including a substrate (referred to as a plurality of upstanding posts 23 [Para 0032; Figs. 1, 6, ref. 23 or 23’]) to which a substance (referred to as sequestering agents [Para 0017, 0019; See Para 0044… sequestering agents may include nucleic acids, such as DNA, RNA and PNA which bind to proteins; See Para 0048, 0051…Sequestering agents (e.g. Abs) ) that captures bioparticles (‘target biomolecules’) is fixed (See Para 0017…Sequestering agents which are selected to capture the desired target biomolecules; See Para 0019…aid posts carrying sequestering agents that will bind with target biomolecules);
a reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)) into which the bioparticles (‘target biomolecules’) released (See Para 0053… the captured cells are then suitably released. ) from the substrate (referred to as a plurality of upstanding posts 23 [Para 0032; Figs. 1, 6, ref. 23 or 23’]) are recovered (See Para 0070…through the capture and washing steps, the captured trophoblasts are released by causing a solution… reagent causes digestion of the Abs, releasing the trophoblasts into the aqueous flow where they pass through the outlet and are collected); and
a hollow fiber membrane module (referred to as base surface of the substrate [Fig. 1, ref. 20; Para 0057]; or embodiment of the random arrangement of posts of different sizes and the relative spacing of the posts throughout the collection region [Para 0034; Figs.1-2).
Tang does not teach a hollow fiber membrane module through which the bioparticles in the reservoir are flowed.
In the analogous art of sample preparation devices that comprise an internal structure that comprises a reservoir, a well, a fluid passageway, sorbent particles, and a filter element that blocks passage of the affinity sorbent particles, Becker teaches a hollow fiber membrane module (referred to as a sample preparation device that comprise an internal structure that comprises a reservoir, a well, a fluid passageway, sorbent particles, and a filter element that blocks passage of the affinity sorbent particles [Para 0008]) through which the bioparticles (See Para 0049… biological samples and reagents used in affinity isolation and purification) in the reservoir (referred to as internal structure of device [Fig. 1A-B, ref. 10]) are flowed (See Para 0048, 0059….fluid flow though the device).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sample preparation system of Tang to incorporate a hollow fiber membrane module through which the bioparticles in the reservoir are flowed, as taught by Becker for the benefit of performing affinity isolation and purification of biological samples such as immunoglobulins, polyclonal and monoclonal antibodies and antibody fragments (Becker, Para 0002, 0030), allowing for efficient sample elution using a relatively small volume of elution fluid. Low elution fluid volumes are advantageous for increasing purified sample concentration for further analysis or processing (Becker, Para 0006).
In addition, Claim 1 recites a bioparticle-capturing module, a reservoir and a hollow fiber membrane module then recites how these structures function. Claim 1 is an apparatus claim and MPEP 2114 recites that "[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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 5, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang teaches that the sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) is configured to allow a bioparticle-containing liquid (See Para 0008…target cells from a sample fluid; See Para 0017…a bodily fluid or other liquid) to be fed to the bioparticle-capturing module (referred to as a substrate [Para 0017-0018; Fig. 1, ref. 11]) and to allow a particle-binding substance (referred to as sequestering agents [Para 0017, 0019; See Para 0044… sequestering agents may include nucleic acids, such as DNA, RNA and PNA which bind to proteins; See Para 0048, 0051…Sequestering agents (e.g. Abs); See Para 0047…Appropriate sequestering agents are selected) bound to the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) to be fed (See Para 0054…or example, a reagent may be applied to cleave the sequestering agent …to release the target cells from the collection region) to the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)).
Tang further teaches that during such cleavage, the outlet from the microchannel is connected to a reservoir or other collector, and the discharge stream carrying the released rare cells is collected for further analysis (Para 0054).
Regarding Claim 6, the sample preparation system of claim 5 is obvious over Tang in view of Becker (See Claim 5 rejection).
Tang teaches that the particle-binding substance is an antibody (referred to as sequestering agents [Para 0017, 0019; See Para 0044… sequestering agents may include nucleic acids, such as DNA, RNA and PNA which bind to proteins; See Para 0048, 0051…Sequestering agents (e.g. Abs); See Para 0047…Appropriate sequestering agents are selected).
Regarding Claim 7, the sample preparation system of claim 5 is obvious over Tang in view of Becker (See Claim 5 rejection).
Tang teaches that the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) are cells (See Para 0054… the target cells from the collection region; See Abstract… separating or isolating cells).
Regarding Claim 8, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang teaches a circulating channel (See Annotated Fig. 6) through which the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) are circulated (See Para 0054… to direct the target cell stream) between the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)) and the hollow fiber membrane module (referred to as base surface of the substrate [Fig. 1, ref. 20; Para 0057]; or embodiment of the random arrangement of posts of different sizes and the relative spacing of the posts throughout the collection region [Para 0034; Figs.1-2; Also See Annotated Fig. 6).
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Annotated Fig. 6, Tang
Regarding Claim 9, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang teaches a branching channel (See Annotated Fig. 6) branching off from the circulating channel (See Annotated Fig. 6) and leading to the reservoir (See Annotated Fig. 6).
Regarding Claim 10, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang further teaches an analysis apparatus (referred to as PCR [Para 0053, 0070]) that analyzes contents (See Para 0053... cells may be counted while attached, or they may be lysed, thereby teaching “contents”) of the reservoir (See Annotated Fig. 6).
In addition, Claim 10 recites an analysis apparatus then recites how it functions. Claim 10 is an apparatus claim and MPEP 2114 recites that "[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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 11, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang teaches that the sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) controls a flow-through operation (See Abstract…A microflow apparatus for separating or isolating cells from a bodily fluid or other liquid sample uses a flow path where straight-line flow ) in which the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) are flowed through (See Para 0017…flow along the flow path…) the hollow fiber membrane module (referred to as base surface of the substrate [Fig. 1, ref. 20; Para 0057]; or embodiment of the random arrangement of posts of different sizes and the relative spacing of the posts throughout the collection region [Para 0034; Figs.1-2; Also See Annotated Fig. 6), on a basis of an analysis result (See Para 0070…Analysis of the collected cells by PCR and FISH based technologies shows that..) from the analysis apparatus (referred to as PCR [Para 0053, 0070]).
In addition, Claim 11 recites a sample preparation system then recites how it functions. Claim 11 is an apparatus claim and MPEP 2114 recites that "[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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 12, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang further teaches a pump (referred to as pump [Para 0026]; ) is provided on (See Para 0026…are fabricated as part of the microflow apparatus, thereby teaching “provided on”) a channel (referred to as microchannel; Fig. 1 and 5, ref. 13]) leading from the bioparticle-capturing module (referred to as a substrate [Para 0017-0018; Figs. 1, 3 and 5, ref. 11]) to the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)).
Regarding Claim 13, the sample preparation system of claim 12 is obvious over Tang in view of Becker (See Claim 12 rejection).
Tang teaches that the pump (referred to as pump [Para 0026]; referred to as which peristaltic-type pump [Para 0082; Fig. 6, ref. 43])) includes a tube pump (referred to as which peristaltic-type pump [Para 0082; Fig. 6, ref. 43]).
Regarding Claim 14, the sample preparation system of claim 12 is obvious over Tang in view of Becker (See Claim 12 rejection).
Tang teaches that the sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) is configured to allow the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) released from the substrate (referred to as a plurality of upstanding posts 23 [Para 0032; Figs. 1, 6, ref. 23 or 23’]) to be fed (See Para 0054…then a different exit passageway to direct the target cell stream to a collection container, thereby teaching “to be fed”) to the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)) by driving (See Para 0068… he syringe pump is operated to produce a slow continuous flow of the sample liquid through the microflow apparatus) of the pump (referred to as pump [Para 0026]; referred to as which peristaltic-type pump [Para 0082; Fig. 6, ref. 43])).
Regarding Claim 15, the sample preparation system of claim 12 is obvious over Tang in view of Becker (See Claim 12 rejection).
Tang teaches that the sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) is configured to allow a particle-binding substance (referred to as sequestering agents [Para 0017, 0019; See Para 0044… sequestering agents may include nucleic acids, such as DNA, RNA and PNA which bind to proteins; See Para 0048, 0051…Sequestering agents (e.g. Abs); See Para 0047…Appropriate sequestering agents are selected) bound to the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest) to be fed (See Para 0054…or example, a reagent may be applied to cleave the sequestering agent …to release the target cells from the collection region) to the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)) by driving (See Para 0068… he syringe pump is operated to produce a slow continuous flow of the sample liquid through the microflow apparatus) of the pump (referred to as pump [Para 0026]; referred to as which peristaltic-type pump [Para 0082; Fig. 6, ref. 43])).
Regarding Claim 16, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang further teaches a bioparticle circulation pump (referred to as any of the pumps [Para 0026]; ) is provided on (See Para 0026…are fabricated as part of the microflow apparatus, thereby teaching “provided on”) a channel (referred to as microchannel; Fig. 1 and 5, ref. 13]) leading from the bioparticle-capturing module (referred to as a substrate [Para 0017-0018; Figs. 1, 3 and 5, ref. 11]) to the reservoir (referred to as exit passage way region [Para 0082; Fig. 6, ref. 45] which is linked to the outlet [Fig. 6, ref. 19’)).
Regarding Claim 17, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang further teaches that the hollow fiber membrane module (referred to as base surface of the substrate [Fig. 1, ref. 20; Para 0057]; or embodiment of the random arrangement of posts of different sizes and the relative spacing of the posts throughout the collection region [Para 0034; Figs.1-2; Also See Annotated Fig. 6) includes a discharge channel (See Para 0054…The microchannel device may be fabricated with more than one exit passageway… such allows one exit passageway to be used for the waste discharge) through which a liquid (See Para 0054…waste discharge) separated from the bioparticles is discharged (See Para 0052… Such purging with effective buffers is expected to leave only the target cells attached in the collection region in the microchannel apparatus, having removed all nonspecifically bound material.), and a discharge pump (See Para 0082…similar peristaltic-type pumping arrangement 43 is also incorporated into the exit passageway region, thereby teaching “discharge pump”) is provided on the discharge channel (See Para 0054…The microchannel device may be fabricated with more than one exit passageway… such allows one exit passageway to be used for the waste discharge, thereby teaching “discharge channel”).
In addition, Claim 17 recites the hollow fiber membrane module including a discharge channel then recites how it functions. Claim 17 is an apparatus claim and MPEP 2114 recites that "[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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Regarding Claim 18, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
Tang further teaches that the sample preparation system (referred to as microflow apparatus [Para 0021, Abstract]) is configured to prevent a sample (See Para 0049… biological samples; Abstract…isolating cells from a bodily fluid or other liquid sample) containing the bioparticles (See Para 0049… biological samples; See Para 0047…biomolecule of interest; ; Abstract…isolating cells from a bodily fluid or other liquid sample)) from communicating fluidly with an external environment (See Para 0039…provide an imperforate cover or base plate for the substrate…forming a permanent seal and closing the microfluidic flow path.).
Tang further discloses the use of an apparatus for separation in a closed sterile field, where a single rigid vessel is used for collection, concentration and transfer (Para 0008).
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US20060160243A1) in view of Becker et al. (US20190134533A1, submitted in IDS on 04/19/2024) as applied to claim 1 above, and further in view of Burshteyn et al. (US20040132198A1).
Regarding Claim 2, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
The combination of Tang and Becker does not teach that the sample preparation system is configured to allow a nucleolytic substance to be fed to the bioparticle- capturing module.
In the analogous art of the field of biological sample preparation and analysis. Burshteyn teaches that the sample preparation system (referred to as a cell sample preparation devices; an apparatus for automatically removing interferants from a sample containing cells [Para 0009-0010]) is configured to allow a nucleolytic substance (See Para 0048…The detergent solution can include substances such as Triton X-100 (Rohm and Haas), …nucleases, azide, and other substances which can clean fluid connections) to be fed to the bioparticle-capturing module (referred to as a filtration device [Abstract]; Fig. 1, ref. 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sample preparation system of Tang and Becker to incorporate that the sample preparation system is configured to allow a nucleolytic substance to be fed to the bioparticle- capturing module, as taught by Burshteyn for the benefit of removing interferants such as unbound antibody molecules or cellular debris from sample of cells (Burshteyn, Para 0039), allowing for the provision of an apparatus and a method for quickly and efficiently removing interferants from a cell sample prior to analysis (Burshteyn, Para 0008).
Regarding Claim 4, the sample preparation system of claim 1 is obvious over Tang in view of Becker and further in view of Burshteyn (See Claim 2 rejection).
The combination of Tang and Becker does not teach that the sample preparation system is configured to allow a nucleolytic substance to be fed to the bioparticle- capturing module.
Burshteyn teaches that the sample preparation system referred to as a cell sample preparation devices; an apparatus for automatically removing interferants from a sample containing cells [Para 0009-0010]) is configured to allow the nucleolytic substance (See Para 0048…The detergent solution can include substances such as Triton X-100 (Rohm and Haas), …nucleases, azide, and other substances which can clean fluid connections) to reach the reservoir or the hollow fiber membrane module (referred to as a microporous hollow fiber membrane having a plurality of pores sized to retain cells while allowing smaller diameter interferants to pass through the membrane [Abstract]) through (See Para 0009…the hollow fiber membrane permits interferants to be removed from a blood cell sample within a lumen of the filter with little or no cell damage, thereby teaching “through”) the bioparticle- capturing module(referred to as a filtration device [Abstract]; Fig. 1, ref. 24).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sample preparation system of Tang and Becker to incorporate that the sample preparation system is configured to allow a nucleolytic substance to be fed to the bioparticle- capturing module, as taught by Burshteyn for the benefit of permitting interferants to be removed from a blood cell sample within a lumen of the filter with little or no cell damage (Burshteyn, Para 0009) allowing for the provision of an apparatus and a method for quickly and efficiently removing interferants from a cell sample prior to analysis (Burshteyn, Para 0008).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tang et al. (US20060160243A1) in view of Becker et al. (US20190134533A1, submitted in IDS on 04/19/2024) as applied to claim 1 above, and further in view of Zhao et al. ("Bioinspired multivalent DNA network for capture and release of cells." Proceedings of the National Academy of Sciences 109.48 (2012): 19626-19631.).
Regarding Claim 3, the sample preparation system of claim 1 is obvious over Tang in view of Becker (See Claim 1 rejection).
The combination of Tang and Becker does not teach that the substance that captures the bioparticles is fixed to the substrate via nucleic acids.
In the analogous art of bioinspired multivalent DNA network for capture and release of cells, Zhao teaches that the substance (referred to as a 3D DNA network comprising repeating adhesive aptamer domains that extend over tens of micrometers into the solution [Abstract; Page 19626]) that captures the bioparticles is fixed (See Fig.1 for “fixing”) to the substrate (referred to as microfluidic chips [RCA Reaction on Microfluidic Chips; Page 19630]) via nucleic acids (referred to as a single-stranded (ss) DNA or several long DNA molecules ; or long (tens to hundreds of microns) DNA molecules containing multiple target-binding aptamers (typically hundreds of repeating aptamer units/strand) [Page 19626-19627; Fig. 1]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the sample preparation system of Tang and Becker to incorporate that the substance that captures the bioparticles is fixed to the substrate via nucleic acids, as taught by Zhao for the benefit of capturing and isolating flowing cells and particulates from a biological fluid (i.e., peripheral blood), including tumor cells, bacteria, viruses, and exosomes, is important for disease diagnosis, monitoring therapy, elucidating biology, and developing new drugs (Zhao, Page 19626), allowing for the provision of a herringbone microfluidic device, the 3D DNA network not only possessing significantly higher capture efficiency than monovalent aptamers and antibodies, but also outperformed previously reported cell-capture microfluidic devices at high flow rates (Zhao, Page 19626).
In addition, Claim 3 recites the sample preparation system then recites how this structure function. Claim 3 is an apparatus claim and MPEP 2114 recites that "[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). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OYELEYE ALEXANDER ALABI whose telephone number is (571)272-1678. The examiner can normally be reached on M-F 7:30am-5:30pm.
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/OYELEYE ALEXANDER ALABI/ Examiner, Art Unit 1797