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
Applicant’s election without traverse of group I comprising claims 1 – 9 in the reply filed on 10/28/2025 is acknowledged.
Claims 10 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2025.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 1, 2 and 7 – 9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”).
Regarding claim 1, Fouillet teaches a device (paragraphs 103 – 206; figures 2 and 3) comprising:
a substrate (substrate 20) having a substantially planar surface;
three electrodes (electrodes 30) disposed on the substrate; and
an overlayer (e.g., dielectric layer 40 or hydrophobic layer 50) disposed on the substrate, wherein the overlayer, in combination with a portion of the substantially planar surface, forms a cavity that defines a channel (microchannel 10), wherein the three electrodes are disposed on the portion of the substantially planar surface and separated from each other along a long axis of the channel.
PNG
media_image1.png
258
498
media_image1.png
Greyscale
PNG
media_image2.png
351
526
media_image2.png
Greyscale
Regarding claim 2, Fouillet teaches the device of claim 1, wherein the three electrodes comprise gold (paragraph 154).
Regarding claim 7, Fouillet teaches the device of claim 1, further comprising at least one additional electrode disposed on the substrate, wherein the at least one additional electrode is disposed on the portion of the substantially planar surface and separated from the three electrodes along the long axis of the channel (Fouillet teaches the additional electrodes 30 on the substrate as shown in figure 2A).
Regarding claim 8, Fouillet teaches the device of claim 1, further comprising:
a controller (e.g., control means 152; paragraphs 3 – 20, 102, 289 – 343) that is operably coupled to the three electrodes, wherein the controller is configured to perform controller operations comprising:
during a first period of time, applying respective voltages relative to a ground potential of an electrolyte within the channel to the three electrodes so as to electrostatically attract (e.g., paragraph 14) a negatively charged biomolecule into the channel;
during a second period of time that is subsequent to the first period of time, applying respective voltages relative to the ground potential of the electrolyte to the three electrodes so as to electrostatically retain (e.g., paragraph 15) the negatively charged biomolecule inside the channel; and
during a third period of time that is subsequent to the second period of time, applying respective voltages relative to the ground potential of the electrolyte to the three electrodes so as to electrostatically expel (e.g., paragraph 16) the negatively charged biomolecule from the channel.
Regarding claim 9, Fouillet teaches the device of claim 1, wherein the channel has a substantially rectangular cross- sectional geometry having a height above the substantially planar surface that is less than 110 microns (paragraph 152).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”) in view of Lowe, Jr. et al. (US 2017/0173580 A1; hereinafter “Lowe”).
Regarding claim 3, Fouillet does not specifically teach the device of claim 1, further comprising an insulating layer disposed on the three electrodes, wherein the insulating layer comprises alumina. Fouillet does teach that the electrode 30 is covered with a dielectric layer (paragraph 156).
Lowe further teaches a related microfluidic apparatus having an electrowetting configuration comprising a dielectric layer having an alumina surface (paragraph 312). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the insulating layer comprises alumina.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”) in view of Collins (US 2014/0248621 A1; hereinafter “Collins”).
Regarding claim 4, Fouillet does not specifically teach the device of claim 1, wherein the overlayer comprises polydimethylsiloxane.
Collins further teaches a related microfluidic apparatus wherein an overlayer defining a microchannel may comprise polydimethylsiloxane (paragraph 57). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the overlayer comprises polydimethylsiloxane.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”) in view of Gallagher et al. (US 2003/0064507 A1; hereinafter “Gallagher”).
Regarding claim 5, Fouillet does not specifically teach the device of claim 1, wherein the substrate comprises sapphire.
Gallagher further teaches a related microfluidic apparatus wherein the substrate can comprise sapphire (paragraph 64). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the substrate comprises sapphire.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”) in view of Gallagher et al. (US 2003/0064507 A1; hereinafter “Gallagher”) and Collins (US 2014/0248621 A1; hereinafter “Collins”).
Regarding claim 6, Fouillet does not specifically teach the device of claim 5, wherein the overlayer and substrate are optically transparent to at least one band of wavelengths of visible light, thereby allowing an interior of the channel to be optically interrogated from outside of the device.
Fouillet does teach that the substrate 20 can comprise glass (paragraph 154).
Collins further teaches a related microfluidic apparatus wherein an overlayer defining a microchannel may comprise polydimethylsiloxane (paragraph 57). The combination of familiar elements is likely to be obvious when it does no more than yield predictable results (see MPEP § 2143, A.). Furthermore, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art (see MPEP § 2144.07). Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the overlayer comprises polydimethylsiloxane.
Both glass and polydimethylsiloxane are known transparent materials. Therefore, it is implicit that the overlayer and substrate would be optically transparent to at least one band of wavelengths of visible light, thereby allowing an interior of the channel to be optically interrogated from outside of the device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN J. SINES whose telephone number is (571)272-1263. The examiner can normally be reached 9 AM-5 PM EST M-F.
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, Elizabeth A Robinson can be reached at (571) 272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
Prosecution Insights