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
Nonelected claims 10 – 20 were canceled by Applicant.
Newly submitted claims 22 – 32 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: The different inventions comprise different features and/or method steps that would require different prior art search and patentability determination considerations, are mutually exclusive and are not obvious variants.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 22 – 32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant's arguments filed 2/2/2026 with respect to the rejection of claims 1, 2, 7 and 9 under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Fouillet al. (US 2010/0000620 A1; hereinafter “Fouillet”) have been fully considered but they are not persuasive. Dependent claim 8 was canceled by the applicant. Applicant alleges that Fouillet does not teach the claimed apparatus. Examiner respectfully disagrees. Regarding newly amended claim 1, Fouillet teaches all of the positively recited structure of the claimed apparatus. Applicant argues that Fouillet does not teach “a negatively charged molecule” and “an electrolyte in the channel.” However, the recitations of the negatively charged molecule or the electrolyte do not further limit or define the claimed apparatus structure itself. Applicant is advised that expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim. Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See In re Young, 75 F.2d *>996<, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963)) (see MPEP § 2115). Additionally, since the prior art teaches all of the positively recited structure of the apparatus as claimed, specifically the recited controller and electrode configuration, absent any other evidence to the contrary, it is considered to be capable of being operated in the manner claimed. The recitation of a new intended use, for an old product, does not make a claim to that old product patentable. The Courts have held that if the prior art structure is capable of performing the intended use, then it meets the claim. See In re Casey, 152 USPQ 235 (CCPA 1967); and In re Otto, 136 USPQ 458, 459 (CCPA 1963). The Courts have held that a statement of intended use in an apparatus claim fails to distinguish over a prior art apparatus. See In re Sinex, 309 F.2d 488, 492, 135 USPQ 302, 305 (CCPA 1962). The Courts have held that the manner of operating an apparatus does not differentiate an apparatus claim from the prior art, if the prior art apparatus teaches all of the structural limitations of the claim. See Ex Parte Masham, 2 USPQ2d 1647 (BPAI 1987). The Courts have held that apparatus claims must be structurally distinguishable from the prior art in terms of structure, not function. See In re Danley, 120 USPQ 528, 531 (CCPA 1959); and Hewlett-Packard Co. V. Bausch and Lomb, Inc., 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (see MPEP §§ 2114 and 2173.05(g)).
Applicant provided no substantive arguments for the rejections of dependent claims 2, 7 and 9.
Applicant also provided no substantive arguments for the additional prior art rejections of dependent claims 3 – 6 under 35 U.S.C. 103.
Regarding newly amended claim 1, upon further consideration, an additional new ground(s) of rejection is made in view of Milenkovic al. (US 2021/0103824 A1; Cite No. 15 on page 3 of the IDS filed 1/25/2024 by Applicant).
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the electrode configuration in newly added dependent claim 21 must be shown and labeled or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 21 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding newly added dependent claim 21, the subject matter of this claim does not appear to be supported in the specification.
Note Regarding Prior Art
Examiner cites particular sections, columns, line numbers, paragraphs and figures, in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
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, 7, 9 and 21 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;
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; and
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, or has the capability 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 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 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).
Regarding claim 21, Fouillet teaches the device of claim 1, wherein the three electrodes are three first electrodes, and wherein the device further comprises three second electrodes disposed on an interior surface of the overlayer opposite each of the three first electrodes, such that the first electrodes in combination with the second electrodes completely surround a perimeter of the channel (Fouillet teaches additional electrodes 30 opposite each other and surround a perimeter of microchannel 10 as shown in figure 13B).
Claim(s) 1, 2 and 4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Milenkovic al. (US 2021/0103824 A1; Cite No. 15 on page 3 of the IDS filed 1/25/2024 by Applicant; hereinafter “Milenkovic”).
Regarding claim 1, Milenkovic teaches throughout the publication a device (DNA-based data storage element 100; paragraph 45; figure 1) comprising:
a substrate (substrate 502; paragraph 82; figure 5A) having a substantially planar surface;
three electrodes (plurality of three cuffed-in electrodes 562; paragraphs 82, 87, 92 and 93; figure 57) disposed on the substrate (502);
an overlayer (compressive layer 506) disposed on the substrate (502), wherein the overlayer, in combination with a portion of the substantially planar surface, forms a cavity that defines a channel (microtubes 422 comprise a hollow interior forming a cavity defining a channel; figures 5E and 5F; paragraphs 70 – 72), wherein the three electrodes (figure 5F) are disposed on the portion of the substantially planar surface and separated from each other along a long axis of the channel (microtube 422; figure 5F); and
a controller (paragraphs 97 and 98) that is operably coupled to the three electrodes, wherein the controller is configured to, or has the capability to, perform controller operations (by varying the bias magnitude and polarity, the contents in a given tube can be released and demand to the desired extent, thereby controlling the concentration of the DNA substrate within the tubes; paragraph 87; the system can be operated in a dynamic or timed manner; paragraphs 72, 91, 101 and 109) 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 a negatively charged biomolecule (DNA is a negatively charged molecule; paragraph 93) into the channel (each microtube can be individually biased to capture, pull or attract DNA; paragraphs 18, 70, 86, 87, 89 and 95);
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 the negatively charged biomolecule inside the channel (each microtube can be individually biased to hold, confine or retain DNA; paragraphs 86, 89, 92, 93, 95); 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 the negatively charged biomolecule from the channel (each microtube can be individually biased to release or expel DNA; paragraphs 86, 87, 93 and 95).
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Regarding claim 2, Milenkovic teaches the device of claim 1, wherein the three electrodes comprise gold (Au electrodes; paragraphs 90 and 94; figure 5F).
Regarding claim 4, Milenkovic teaches the device of claim 1, wherein the overlayer comprises polydimethylsiloxane (paragraph 91).
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”), as applied to claims 1, 2, 7 and 9 above, and further 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”), as applied to claims 1, 2, 7 and 9 above, and further 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”), as applied to claims 1, 2, 7 and 9 above, and further 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”) and Gallagher et al. (US 2003/0064507 A1; hereinafter “Gallagher”), as applied to claim 5 above, and further in view of 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
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.
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.
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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.
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BRIAN J. SINES
Primary Patent Examiner
Art Unit 1796
/BRIAN J. SINES/Primary Examiner, Art Unit 1796
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