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 .
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.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08 June 2026 was filed after the mailing date of the Non-final Office Action on 06 March 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment/Arguments
In view of Applicant’s amendments filed 08 June 2026, previous objection of claims 10 and 11 has been withdrawn.
Applicant's arguments filed 08 June 2026 have been fully considered but they are not persuasive.
Applicant argues that primary reference Si fails to disclose the newly amended claim limitations of “a first plurality of chambers, the first plurality of chambers including a first chamber disposed along a first branch of the at least two branches; and a second plurality of chambers, the second plurality of chambers including a second chamber disposed along a second branch of the at least two branches” and “directing a fluidic sample including said analyte from a channel of a fluidic device to a first chamber of the fluidic device via a first branch of the channel, and a second chamber of the fluidic device via a second branch of the channel, wherein the fluidic device further includes (i) a first plurality of chambers including the first chamber, and (ii) a second plurality of chambers including the second chamber” as recited in newly amended instant, independent claims 1 and 27, respectively (see pgs. 9-10 of Remarks).
However, primary reference Si discloses a main channel w/ at least two branches, along which a plurality of big chambers (i.e., plurality of first chambers) and a plurality of smaller chambers (i.e., plurality of second chambers) are disposed. In other words, a first branch of the main channel comprises a first chamber of the first plurality of chambers and a second branch of the main channel includes a second chamber disposed along a second branch of the at least two branches (see annotated Fig. 1A), therefore primary reference Si reads on newly amended instant, independent claims 1 and 27.
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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 20-23, 32-35, and 52-55 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.
Claim 20 recites the limitation "said first volume" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears claim 20 should depend from claim 2 for proper antecedent basis.
Claim 21 is rejected for being dependent upon rejected claim 20.
Claim 22 recites the limitation "said second volume" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears claim 22 should depend from claim 2 for proper antecedent basis.
Claim 23 is rejected for being dependent upon rejected claim 22.
Claim 32 recites the limitation "said first volume" in line 1 and “said second volume” in line 3. There is insufficient antecedent basis for this limitation in the claim. It appears claim 32 should depend from claim 28for proper antecedent basis.
Claim 33 recites the limitation "said first volume" in line 1 and “said second volume” in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears claim 33 should depend from claim 28 for proper antecedent basis.
Claim 34 recites the limitation "said first volume" in line 1 and “said second volume” in line 2. There is insufficient antecedent basis for this limitation in the claim. It appears claim 34 should depend from claim 28 for proper antecedent basis.
Dependent claim 35 is rejected for being dependent upon rejected claim 34.
Claim 52 recites the limitation "said first volume" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears claim 52 should depend from claim 28 for proper antecedent basis.
Claim 53 is rejected for being dependent upon rejected claim 52.
Claim 54 recites the limitation "said second volume" in line 1. There is insufficient antecedent basis for this limitation in the claim. It appears claim 54 should depend from claim 28 for proper antecedent basis.
Claim 55 is rejected for being dependent upon rejected claim 54.
Claim Rejections - 35 USC § 102
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 1-7, 12, 14, 16, 18-20, 24-28, 32, 39, 41, 44, 46, 48, 50-52, and 56-57 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “A multi-volume microfluidic device with no reagent loss for low-cost digital PCR application” to Si Huaqing et al. (herein Huaqing) as cited on the 6/28/2023 IDS.
Regarding claim 1, Huaqing discloses a dPCR chip (i.e., a device for partitioning a sample) (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1), comprising: a main channel having at least two branches (see Fig. 1); a plurality of big chambers (i.e., a first plurality of chambers) and a plurality of small chambers (i.e., a second plurality of chambers) (see Fig. 1A), wherein each branch of multiple branches of the main channel comprises multiple first and second chambers disposed along and thus discloses wherein a first branch of the main channel comprises a first chamber disposed along a first branch and a second chamber disposed along a second branch (see Fig. 1A).
Regarding claims 2-3, Huaqing discloses all the limitations of claim 1 above.
Huang discloses said first plurality of chambers comprises 1024 first chambers; (ii) said second plurality of chambers comprises 768 second chambers ); and (iii) a first chamber of said 1024 first chambers is larger than a second chamber of said 768 chambers (i.e., the first chamber has a first volume different than a second volume of the second chamber) (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1). Huaqing discloses the ratio the first volume to the second volume is 5.06.
Regarding claim 4, Huaqing discloses all the limitations of claim 2 above.
Huaqing does not disclose that the device includes any moving parts (see 2.1 Chip design and fabrication; Fig. 1).
Regarding claim 5, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses a channel in fluid communication with said first plurality of chambers and said second plurality of chambers (see Fig. 1).
Regarding claim 6, Huaqing discloses all the limitations of claim 5 above.
Huaqing discloses the device comprises a cover glass configured to seal said first plurality of chambers, said second plurality of chambers, and said channel (see Fig. 1).
Regarding claim 7, Huaqing discloses all the limitations of claim 6 above.
Huaqing discloses the device comprises a PDMS micro-array layer (i.e., a body) defining said channel, said first plurality of chambers, and said second plurality of chambers, and wherein said cover is fixed to said body (see Fig. 1).
Regarding claim 12, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses the total volume of the first plurality of chambers is approximately 4 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 14, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein a total second volume of the second plurality of chambers is approximately 0.6 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 16, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein a total first volume of said first plurality of chambers, approx. 4 microliters, is at least five times as large as a total second volume of said second plurality of chambers, approx. 0.6 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 18, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein first chambers of said first plurality of chambers comprise substantially similar volumes (see Fig. 1).
Regarding claim 19, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein second chambers of said second plurality of chambers comprise substantially similar volumes (see Fig. 1).
Regarding claim 20, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein said first volume is 4,000 picoliters (see Fig. 1).
Regarding claim 24, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses the heights (i.e., depths) of the first and second chambers are the same at 100 micrometers (see Fig. 1).
Regarding claim 25, Huaqing discloses all the limitations of claim 24 above.
Huaqing discloses the cross-sectional area of said first chamber is substantially different from the cross-sectional area of the second chamber as their diameters are substantially different, 225 micrometers vs. 100 micrometers (see Fig. 1).
Regarding claim 26, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses the device is a microfluidic device (see 2.1 Chip design and fabrication; Fig. 1).
Regarding claim 27, Huaqing discloses a method of analyzing an analyte (see 2.2 Microfluidic chip operation and 2.4 Data acquisition and analysis), the method comprising dispensing a sample into an inlet of a dPCR chip (i.e., a fluidic device) fluidic device, wherein the fluidic device is configured to direct said sample from a main channel into a big chamber (i.e., first chamber) located along a first branch of the main channel and into a small chamber (i.e., second chamber) located along a second branch of the main channel, wherein said first chamber and said second chamber are configured to determine nucleic acid concentration (i.e., analyte) (see 2.1 Chip design and fabrication, 1st paragraph; 2.2 Microfluidic chip operation; and 2.4 Data acquisition and analysis; Figs. 1-3). Huaqing discloses wherein the fluidic device comprises a plurality of chambers including the first chamber and a plurality of chambers including the second chamber (see Fig. 1A). Huaqing detecting said analyte in said first chamber and said second chamber (see 2.4 Data acquisition and analysis).
Regarding claim 28, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses said first plurality of chambers comprises 1024 first chambers; said second plurality of chambers comprises 768 second chambers; and the first chamber of said 1024 first chambers is larger than the second chamber of said 768 chambers (i.e., the first chamber has a first volume different than a second volume of the second chamber) (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1). Huaqing discloses wherein said first volume provides a lower limit of fluorescence detection of said analyte in said first chamber that is lower than a second lower limit of fluorescence of said analyte in said second chamber provided by said second volume (see Fig. 4B-C).
Regarding claim 32, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein said volume provides a first working range of detection of said analyte in said first chamber that is different than a second working range of detection of said analyte in said second chamber provided by said second volume (see 3.1 Effect of multi-volume design on dynamic range of dPCR chip; Fig. 4).
Regarding claim 33, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses that due to the multi-volume design of the dPCR chip a wide range of analyte concentration detection is possible and wherein samples with large concentration differences can be handled on a single chip (see 3.1 Effect of multi-volume design on dynamic range of dPCR Chip). Therefore, Huaqing discloses that due to the first volume and second volumes of the first and second chambers, analysis of a first analyte concentration and second analyte concentration can be determined on the same dPCR chip.
Regarding claims 34-35, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses the ratio the first volume to the second volume is 5.06.
Regarding claim 36, Huaqing discloses all the limitations of claim 27 above.
Huaqing does not disclose that the device includes any moving parts (see 2.1 Chip design and fabrication; Fig. 1).
Regarding claim 38, Huaqing discloses all the limitations of claim 37 above.
Huaqing discloses the device comprises a cover glass configured to seal said first plurality of chambers, said second plurality of chambers, and said channel (see Fig. 1).
Regarding claim 39, Huaqing discloses all the limitations of claim 38 above.
Huaqing discloses the device comprises a PDMS micro-array layer (i.e., a body) defining said channel, said first plurality of chambers, and said second plurality of chambers, and wherein said cover is fixed to said body (see Fig. 1).
Regarding claim 44, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses the total volume of the first plurality of chambers is approximately 4 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 46, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein a total second volume of the second plurality of chambers is approximately 0.6 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 48, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein a total first volume of said first plurality of chambers, approx. 4 microliters, is at least five times as large as a total second volume of said second plurality of chambers, approx. 0.6 microliters (see 2.1 Chip design and fabrication, 1st paragraph; Fig. 1).
Regarding claim 50, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein first chambers of said first plurality of chambers comprise substantially similar volumes (see Fig. 1).
Regarding claim 51, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein second chambers of said second plurality of chambers comprise substantially similar volumes (see Fig. 1).
Regarding claim 52, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein said first volume is 4,000 picoliters (see Fig. 1).
Regarding claim 56, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses the heights (i.e., depths) of the first and second chambers are the same at 100 micrometers (see Fig. 1).
Regarding claim 57, Huaqing discloses all the limitations of claim 56 above.
Huaqing discloses the cross-sectional area of said first chamber is substantially different from the cross-sectional area of the second chamber as their diameters are substantially different, 225 micrometers vs. 100 micrometers (see Fig. 1).
Claim Rejections - 35 USC § 103
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.
Claims 8, 10-11, 13, 15, 17, 21-23, 29-31, 40, 42-43, 45, 47, 49, and 53-55 are rejected under 35 U.S.C. 103 as being unpatentable over by “A multi-volume microfluidic device with no reagent loss for low-cost digital PCR application” to Si Huaqing et al. (herein Huaqing) as cited on the 6/28/2023 IDS.
Regarding claim 8, Huaqing discloses all the limitations of claim 5 above.
Huaqing fails to disclose “wherein said second plurality of chambers is in fluid communication with said channel upstream of said first plurality of chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. C. Rearrangement of Parts the particular placement of a given device component is considered an obvious matter of design choice absent evidence that shifting the placement would modify the operation of the device. In the instance of the instant application the device is designed to partition a sample, same as the device of primary reference Huaqing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to place the second plurality of chambers in fluid communication with said channel upstream of said first plurality of chambers as desired for fluid flow and separation.
Regarding claim 10, Huaqing discloses all the limitations of claim 1 above.
Huaqing discloses wherein said first plurality of chambers comprises at least about 1,000 first chambers (see 2.1 Chip design and fabrication, 1st paragraph), however fails to disclose “wherein said second plurality of chamber comprises at least about 1,000 second chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. B. Duplication of Parts the court has held that mere duplication of parts has no patentable significance unless a new or unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have at least about 1,000 second chambers or any number desired for the benefit of controlling fluid flow and separation.
Regarding claim 11, Huaqing discloses all the limitations of claim 10 above.
Huaqing fails to disclose “wherein said first plurality of chambers comprises at least about 5,000 first chambers and wherein said second plurality of chamber comprises at least about 5,000 second chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. B. Duplication of Parts the court has held that mere duplication of parts has no patentable significance unless a new or unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have at least about 5,000 first and second chambers or any number desired for the benefit of controlling fluid flow and separation.
Regarding claim 13, Huaqing discloses all the limitations of claim 1 above.
Huaqing fails to disclose “wherein a total first volume of said first plurality of chambers is greater than or equal to about 10 µL” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total first volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total first volume of said first plurality of chambers to be greater than or equal to about 10 microliters for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 15, Huaqing discloses all the limitations of claim 1 above.
Huaqing fails to disclose “wherein a total volume of said second plurality of chambers is greater than or equal to about 1 µL” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total volume of said second plurality of chambers to be greater than or equal to about 1 microliters for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 17, Huaqing discloses all the limitations of claim 16 above.
Huaqing fails to disclose “wherein said first total volume is at least ten times as large as said total second volume” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total first volume to be at least ten times as large as said total second volume for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 21, Huaqing discloses all the limitations of claim 20 above.
Huaqing fails to disclose “wherein said first volume is less than or equal to about 1000 picoliters (pL)” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., first volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the first volume to be less than or equal to about 1000 pL for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claims 22-23, Huaqing discloses all the limitations of claim 1 above.
Huaqing fails to disclose wherein said second volume is between 25 to 250 pL as recited in the instant claims.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., second volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the second volume to be between 25 to 250 pL for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 29, Huaqing discloses all the limitations of claim 28 above.
Huaqing fails to explicitly disclose “wherein said first volume provides an upper limit of detection of said analyte in said first chamber that is lower than a second lower limit of detection of said analyte in said second chamber provided said second volume”, however, Huaqing discloses that fluorescent intensity (i.e., limit of detection) can be determined by chamber volume, placement, and number of chambers (see 3.1 Effect of multi-volume design on dynamic range of dPCR chip and 3.3 Uniformity analysis of the dPCR chip). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the first volume to provide an upper limit of detection of said analyte in said first chamber that is lower than a second lower limit of detection of said analyte in said second chamber provided said second volume for the benefit of achieving desired detection range (see 3.1 Effect of multi-volume design on dynamic range of dPCR chip).
Regarding claims 30-31, Huaqing discloses all the limitations of claim 28 above.
Huaqing fails to disclose the method “further comprising detecting said analyte at a concentration at or above said first lower limit of detection and below said second lower limit of detection” or “further comprising detecting said analyte at a concentration above said first upper detection limit and below said second upper detection limit” as recited in the instant claims. However, Huaqing discloses the dPCR chip can be used to detect a wide range of analyte concentrations (see Fig. 6) and that fluorescent intensity (i.e., limit of detection) can be determined by chamber volume, placement, and number of chambers (see 3.1 Effect of multi-volume design on dynamic range of dPCR chip and 3.3 Uniformity analysis of the dPCR chip). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the method to further comprise detecting said analyte at a concentration at or above said first lower limit of detection and below said second lower limit of detection and/or further comprise detecting said analyte at a concentration above said first upper detection limit and below said second upper detection limit for the benefit of achieving desired concentration detection range (see 3.1 Effect of multi-volume design on dynamic range of dPCR chip).
Regarding claim 40, Huaqing discloses all the limitations of claim 37 above.
Huaqing fails to disclose “wherein said second plurality of chambers is in fluid communication with said channel upstream of said first plurality of chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. C. Rearrangement of Parts the particular placement of a given device component is considered an obvious matter of design choice absent evidence that shifting the placement would modify the operation of the device. In the instance of the instant application the device is designed to partition a sample, same as the device of primary reference Huaqing. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to place the second plurality of chambers in fluid communication with said channel upstream of said first plurality of chambers as desired for fluid flow and separation.
Regarding claim 42, Huaqing discloses all the limitations of claim 27 above.
Huaqing discloses wherein said first plurality of chambers comprises at least about 1,000 first chambers (see 2.1 Chip design and fabrication, 1st paragraph), however fails to disclose “wherein said second plurality of chamber comprises at least about 1,000 second chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. B. Duplication of Parts the court has held that mere duplication of parts has no patentable significance unless a new or unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have at least about 1,000 second chambers or any number desired for the benefit of controlling fluid flow and separation.
Regarding claim 43, Huaqing discloses all the limitations of claim 42 above.
Huaqing fails to disclose “wherein said first plurality of chambers comprises at least about 5,000 first chambers and wherein said second plurality of chamber comprises at least about 5,000 second chambers” as recited in the instant claim.
Per MPEP 2144.04 VI. B. Duplication of Parts the court has held that mere duplication of parts has no patentable significance unless a new or unexpected result is produced. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have at least about 5,000 first and second chambers or any number desired for the benefit of controlling fluid flow and separation.
Regarding claim 45, Huaqing discloses all the limitations of claim 27 above.
Huaqing fails to disclose “wherein a total first volume of said first plurality of chambers is greater than or equal to about 10 µL” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total first volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total first volume of said first plurality of chambers to be greater than or equal to about 10 microliters for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 47, Huaqing discloses all the limitations of claim 27 above.
Huaqing fails to disclose “wherein a total volume of said second plurality of chambers is greater than or equal to about 1 µL” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total volume of said second plurality of chambers to be greater than or equal to about 1 microliters for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 49, Huaqing discloses all the limitations of claim 48 above.
Huaqing fails to disclose “wherein said first total volume is at least ten times as large as said total second volume” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., total volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the total first volume to be at least ten times as large as said total second volume for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claim 53, Huaqing discloses all the limitations of claim 52 above.
Huaqing fails to disclose “wherein said first volume is less than or equal to about 1000 picoliters (pL)” as recited in the instant claim.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., first volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the first volume to be less than or equal to about 1000 pL for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
Regarding claims 54-55, Huaqing discloses all the limitations of claim 27 above.
Huaqing fails to disclose wherein said second volume is between 25 to 250 pL as recited in the instant claims.
Per MPEP 2144.04 IV. A. Changes in Size/Proportion the courts have held that, where the only difference between the prior art and the claims was a recitation of relative dimensions (i.e., second volume in this instance) of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date for the second volume to be between 25 to 250 pL for the benefit of controlling fluid flow and separation as both the prior art and instant invention are drawn to devices for partitioning a sample.
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 KATHRYN E LIMBAUGH whose telephone number is (571)272-0787. The examiner can normally be reached Monday-Thursday 7:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (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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/KATHRYN ELIZABETH LIMBAUGH/Primary Examiner, Art Unit 1797
Prosecution Insights