DETAILED ACTION
In application filed on 06/23/2023, Claims 1-23, 28 and 30-31 are pending. The claim set submitted on 5/30/2024 is considered because this is the most recent claim set with some preliminary amendments. Claims 1-9 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 06/23/2023 and 11/09/2023 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 (Claims 1-9) in the reply filed on 05/20/2026 is acknowledged. Claims 10-23, 28 and 30-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups, there being no allowable generic or linking claim.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 05/20/2026.
Group I, Claims 1-9 are considered on the merits below.
Drawings
The drawings are objected to because certain figures, not limited to Figures 5-9, 11 and 16. Applicant should provide Figures with improved resolution.
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 § 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 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.
Claims 1-4 and 8-9 are rejected under 35 U.S.C. 102 (a) (1) as being anticipated by Abbaspourrad et al. (US20190308192A1, submitted in IDS 06/23/2023).
Regarding Claim 1, Abbaspourrad teaches a microfluidic circuit comprising:
an inlet port (referred to as inlet [Fig. 1A, ref. 12]);
an outlet port (referred to as outlet [Fig. 1A, ref. 14]);
a main channel (referred to as passage [Fig. 1A, ref. 10]) fluidically connecting (See Fig. 1A) the inlet port (referred to as inlet [Fig. 1A, ref. 12]) and the outlet port (referred to as outlet [Fig. 1A, ref. 14]); and
a series of microchambers (referred to as corrals [Fig. 1A, ref. 16]) of differing volumes (See Para 0037…The microfluidic system can be created and used with several corrals with different sizes) disposed within (See Fig. 1A) the main channel (referred to as passage [Fig. 1A, ref. 10]), wherein each microchamber (referred to as corrals [Fig. 1A, ref. 16]) is individually fluidically connected (See Fig. 1A) to the main channel (referred to as passage [Fig. 1A, ref. 10]) via individual microchamber openings (referred to as openings [Fig. 1A, ref. 26]).
Regarding Claim 2, Abbaspourrad teaches that the individual microchamber openings (referred to as openings [Fig. 1A, ref. 26]) are positioned to face (See Fig. 1A) the outlet port (referred to as outlet [Fig. 1A, ref. 14]).
Regarding Claim 3, Abbaspourrad teaches that each microchamber referred to as corrals [Fig. 1A, ref. 16]) comprises an exterior wall (See Annotated Fig. 1A) and an interior wall (See Annotated Fig. 1A), wherein the interior wall (See Annotated Fig. 1A) defines a volume of space (referred to as confinement region [Fig. 1A, ref. 44]) constituting the microchamber referred to as corrals [Fig. 1A, ref. 16]).
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Annotated Fig. 1A
Regarding Claim 4, Abbaspourrad teaches that the exterior wall (See Annotated Fig. 1A) of the microchamber referred to as corrals [Fig. 1A, ref. 16]) comprises an oval shape or an elongated oval shape (See Annotated Fig. 1 for the oval shape; See Para 0036… In one embodiment, the configuration of the corrals is selected from the group consisting of …an oval configuration, …and a semicircular configuration.) and the interior wall (See Annotated Fig. 1A) of the microchamber (referred to as openings [Fig. 1A, ref. 26]) defines a circular volume of space (referred to as confinement region [Fig. 1A, ref. 44]; the confinement region has a circular shape due to the shape of the corral) constituting the microchamber (referred to as corrals [Fig. 1A, ref. 16]).
In addition, Examiner submits that the claimed “oval shape or an elongated oval shape” is not specifically defined in the specification and will therefore be given the broadest reasonable interpretation in light of the specification. Any shape that has a rounded form will be considered a “oval shape or an elongated oval shape”. As such, the shape defined by the exterior wall would satisfy a “oval shape or an elongated oval shape”.
Regarding Claim 8, Abbaspourrad teaches that the circuit comprises 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, or more than 24 microchambers (Para 0015;See Fig 1A… . FIG. 1A shows a PDMS-based microfluidic device featuring 7 corrals inside the channel.) .
Regarding Claim 9, Abbaspourrad teaches that the main channel (referred to as passage [Fig. 1A, ref. 10]) comprises a linear shape (referred to as passage [Fig. 1A, ref. 10], where the passage has a linear shape).
In addition, Examiner submits that the claimed “linear shape” is not specifically defined in the specification and will therefore be given the broadest reasonable interpretation in light of the specification. Any shape that has an elongated/somewhat linear form will be considered a “linear shape”. As such, the shape defined by the passge would satisfy a “linear shape”.
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 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Abbaspourrad et al. (US20190308192A1, submitted in IDS 06/23/2023).
Regarding Claim 5, Abbaspourrad teaches that the individual microchamber openings (referred to as openings [Fig. 1A, ref. 26]) comprise an opening width of 40-100 µm (See Para 0034…Furthermore, there is (are) one or more gaps between the closed side and the partially open side of the corrals, with each gap ranging from about 10 μm to about 500 μm), each interior wall (See Annotated Fig. 1A) of the microchambers (referred to as corrals [Fig. 1A, ref. 16]) has a diameter between 200-1500 µm (See Para 0039…the corals can have a maximum inner diameter ranging from about 20 μm to 1 mm.), each inner microchamber space comprises a height of 40-100 µm (See Para 0040…The depth or height of the channel can range from about 20 μm to 1000 μm), the inlet port (referred to as inlet [Fig. 1A, ref. 12]) comprises a diameter (referred to as inlet [Fig. 1A, ref. 12]), and the outlet port (referred to as outlet [Fig. 1A, ref. 14]) comprises a diameter (referred to as outlet [Fig. 1A, ref. 14]).
Abbaspourrad does not exility teach the dimensions of the claimed structural parts of Claim 5.
However, Abbaspourrad does teach that the microfluidic circuit of Claim 5 is a microfluidic device where the only difference between the prior art and the claim is that the individual microchamber openings comprise an opening width of 40-100 µm, each interior wall of the microchambers has a diameter between 200-1500 µm, each inner microchamber space comprises a height of 40-100 µm, the inlet port comprises a diameter of 500-1500 µm, and the outlet port comprises a diameter of 500-1500 µm.
The Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (See MPEP § 2144.05, Part II, Subpart B; In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984)).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to design and fabricate a microfluidic circuit where the individual microchamber openings comprise an opening width of 40-100 µm, each interior wall of the microchambers has a diameter between 200-1500 µm, each inner microchamber space comprises a height of 40-100 µm, the inlet port comprises a diameter of 500-1500 µm, and the outlet port comprises a diameter of 500-1500 µm, for the benefit of providing of a microfluidic system and method of use of the microfluidic system for separation of motile sperm from immotile sperm or motile bacteria from immotile bacteria (Abbaspourrad, Para 0002).
Regarding Claim 6, Abbaspourrad teaches that the each microchamber (referred to as corrals [Fig. 1A, ref. 16]) decreases in volume capacity (See Fig. 2 for the decrease in the sizes of the corrals, thereby teaching “decreases in volume capacity”; See Para 0016… FIG. 2 is an illustration of three different sized corrals of the present application) as its position increases in distance (See Fig. 1A for the flow direction of Fluid F from the inlet to the outlet, where the corrals are arranged from left to right (inlet to outlet)) from the inlet port (referred to as inlet [Fig. 1A, ref. 12]).
Abbaspourrad does not explicitly teach the position of each microchamber decreasing in volume capacity with respect to the inlet port.
However, one having ordinary skill in the art at the time the invention was made would recognize these limitations as nothing more than a rearrangement of parts to effect the determination of the optimal structural configuration and design of the device and could seek the benefits associated with having the position of each microchamber decreasing in volume capacity with respect to the inlet port, given that a rearrangement of parts is a supporting rationale of obviousness especially because Kim discloses all the claimed structures of as cited above only in a different configuration (under broadest reasonable interpretation). Please see MPEP 2144.04(VI) (C) for further details.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the rearrangement of the position of each microchamber decreasing in volume capacity with respect to the inlet port for the benefit of providing a device of optimal structural design facilitating device compactness and the optimal performance which allows for the provision of a microfluidic system and method of use of the microfluidic system for separation of motile sperm from immotile sperm or motile bacteria from immotile bacteria (Abbaspourrad, Para 0002).
Regarding Claim 7, Abbaspourrad teaches that each interior wall (See Annotated Fig. 1A) of the microchamber (referred to as corrals [Fig. 1A, ref. 16]) decreases in diameter (See Annotated Fig. 2 for the decreases in diameter) as a microchamber (referred to as openings [Fig. 1A, ref. 26]) position increases in distance (See Fig. 1A for the flow direction of Fluid F from the inlet to the outlet, where the corrals are arranged from left to right (inlet to outlet)) from the inlet port(referred to as inlet [Fig. 1A, ref. 12]).
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Annotated Fig. 2, Abbaspourrad
Abbaspourrad does not explicitly teach the position of the interior wall of each microchamber decreasing in diameter with respect to the inlet port.
However, one having ordinary skill in the art at the time the invention was made would recognize these limitations as nothing more than a rearrangement of parts to effect the determination of the optimal structural configuration and design of the device and could seek the benefits associated with having the position of the interior wall of each microchamber decreasing in diameter with respect to the inlet port, given that a rearrangement of parts is a supporting rationale of obviousness especially because Kim discloses all the claimed structures of as cited above only in a different configuration (under broadest reasonable interpretation). Please see MPEP 2144.04(VI) (C) for further details.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the rearrangement of the position of the interior wall of each microchamber decreasing in diameter with respect to the inlet port for the benefit of providing a device of optimal structural design facilitating device compactness and the optimal performance which allows for the provision of a microfluidic system and method of use of the microfluidic system for separation of motile sperm from immotile sperm or motile bacteria from immotile bacteria (Abbaspourrad, Para 0002).
Regarding Claim 8, Abbaspourrad teaches that the circuit comprises 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 13, 14, 15, 16, 17, 18, 19, 20, 21, 22, 23, 24, or more than 24 microchambers (Para 0015;See Fig 1A… . FIG. 1A shows a PDMS-based microfluidic device featuring 7 corrals inside the channel).
Regarding Claim 9, Abbaspourrad teaches that the main channel (referred to as passage [Fig. 1A, ref. 10]) comprises a linear shape (referred to as passage [Fig. 1A, ref. 10], where the passage has a linear shape).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached on (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/OYELEYE ALEXANDER ALABI/ Examiner, Art Unit 1797
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