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 .
Response to Arguments
Applicant has addressed the claim rejections under 35 U.S.C. 112(b). Applicant’s claim amendments have overcome the previously presented 35 U.S.C. 112(b) rejection. However, a new grounds of rejection under 35 U.S.C. 112(b) is presented in light of amendments to the claims.
Regarding the provisional nonstatutory double patenting (NSDP) rejection in view of reference Application No. 18/127011, Applicant’s amendment to instant independent claim 1 renders it unobvious in view of the reference Application No. ‘011. Therefore, the NSDP rejection with respect to reference Application No. 18/127011 is withdrawn.
Regarding the provisional NSDP rejection in view of reference Application No. 18/362312, the rejection is withdrawn due to the instant application’s earlier effective filing date than that of reference Application No. 18/362312, and because it is the only standing NSDP rejection (MPEP § 804.1(b)(i)).
Regarding the rejection under 35 U.S.C. 103, applicant argues that the prior art combination presented in the prior Office Action fail to fully disclose, teach, or suggest newly amended independent claim 1, and this is found persuasive. Therefore, the rejection under 35 U.S.C. 103 is withdrawn in light of the amendments to the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-13 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.
Regarding claim 1, it is unclear if the limitation “receiving a mixture solution that comprises a plurality of cells and a plurality of impurities” is intended to limit a capability of the first stage filter. Consequently, it is unclear whether the limitation “a plurality of cells and a plurality of impurities” is intended to be positively recited structure.
It is unclear if the limitation “wherein a plurality of exogenous molecules enter the input chamber through the first inlet valve” is intended to recite a capability of the first inlet valve. Consequently, it is unclear if the limitation “a plurality of exogenous molecules” is intended to be positively recited structure.
It is unclear what structure(s) is/are linked to or capable of completing the limitation “wherein during an electroporation process, the plurality of exogenous molecules in the activation chamber are accelerated by an electrical field to impinge upon the plurality of cells in the plurality of cavities of the MEMS plate, thereby forming a plurality of transfected cells” based on the instant claim language.
It is unclear what structure(s) is/are linked to or capable of completing the limitation “wherein the ultrasound vibrator vibrates to allow the plurality of cells in the activation to settle into the plurality of cavities of the MEMS plate, respectively”. That is, it is unclear if it is directed to a capability of the claimed ultrasound vibrator or a capability of the claimed combination of the ultrasound vibrator and controller.
Claims 2-13 are similarly rejected as they depend upon rejected claim 1.
Allowable Subject Matter
Note: A new prior art search was necessitated by amendments to the claims. The closest prior art found is described below.
Regarding independent claim 1, the prior art of record presented in the prior Office Action in combination with Bernate et al. (US 2019/0100774 A1) (see PTO-892), Futami et al. (US 2006/0281168 A1) (see PTO-892), and Chang (US 2020/0340014 A1) (see PTO-892) provides the closest prior art combination.
Bernate discloses a cell filter integrated with a microfluidic electroporation device. Futami discloses a two-chambered device for cell fusion. Chang discloses a microfluidic electroporation device using micromesh electrodes.
The prior art combination fails to teach, disclose, or suggest the limitation with respect to the location of the MEMS plate relative to the MEMS filter, “wherein each of the plurality of cavities are aligned with one of the plurality of funnel structures” within the claimed environment.
Claims 1 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 2-13 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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.
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/A.J.C./Examiner, Art Unit 1799
/William H. Beisner/Primary Examiner, Art Unit 1799
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