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 .
Applicant’s filing of claims 1-18 on 7/10/23 is acknowledged. Claims 1-18 are pending and are under examination.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/2/25 was acknowledged. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-18 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 1 is rejected because the scope of the claim is indefinite for the following reasons: 1) the preamble is unclear, the term, e.g., “comprising” should be included to clearly indicate the scope of the preamble; 2) “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not; 3) “with a or connectable” in “with a or connectable to a reaction chamber” makes claim unclear; 4) “the first sub-channel” and “the second sub-channel” raises an antecedent basis issue; 5) “connects or is connectable” in “connects or is connectable to the reaction chamber” makes the claim unclear; 6) “the fluidic flow controllers” raises an antecedent basis issue; 7) “to facilitate fluidic flow in a microfluidic channel (on-status) and/or actuatable to stop fluidic flow in a microfluidic channel (off-status)” is unclear because the claim language in parentheses is not positively claimed and it is unclear how this structurally further defines the claimed microfluidic circuit. Further, the microfluidic channel associate with the on-status and off-status raises an antecedent basis issue.
Claim 3 is rejected because “their respective sub-channels” is unclear. What sub-channels are these referring to? The term “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not.
Claim 5 is rejected because 1) “the fluidic flow controllers” raises an antecedent basis issue; 2) the (on-status) and (off-status) is unclear because the claim language in parentheses is not positively claimed and it is unclear how this structurally further defines the claimed microfluidic circuit; 3) the microfluidic channel associate with the on-status and off-status raises an antecedent basis issue; 4) “in particular” appears to be an optional term.
Claim 6 is rejected because “a fluidic flow controllers”; “a further fluidic flow controllers” raises an antecedent basis issue. Also, “connecting or connectable” is unclear.
Claim 8 is rejected because: 1) the scope of the preamble is unclear, the term, e.g., “comprising” should be included to clearly indicate the scope of the preamble; 2) the term “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not.
Claim 9 is rejected because 1) “a fluidic flow controllers” raise an antecedent basis issue; 2) the term “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not; 3) “in particular” appears to be an optional term.
Claim 10 is rejected because “suitable magnetic capturing carriers” is unclear. What makes the magnetic capturing carriers “suitable”? Likewise, “suitable magnetic microbeads” is unclear.
Claim 11 is rejected because “in particular” appears to be an optional term.
Claims 10-12 and 14-17 are rejected because the term “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not.
Claim 14 is rejected because 1)”(lysis agent”, “(washing agent)” and “(dissolution agent)” are claimed in parentheses, and thus is not positively claimed. Also, it is unclear how these terms structurally further define the claimed microfluidic circuit; 2) “one or more, the same or different, suitable reaction agents” is unclear. What makes the reaction agents “suitable”?; 3) “reagent suitable for” is unclear.
Claims 14-16 and 18 recite the terms, e.g., “comprising or consisting” or “comprising or consisting”. This makes the claims unclear. See MPEP 2111.03.
Claims 16 and 17 are rejected because the scope of the claim is unclear. It cannot be determined what is structurally being positively claimed besides the magnetic field exciter.
Claims 1, 16 and 17 are rejected because, e.g., “for use” and “arranged in use” claims a process, e.g., “use” in a circuit/system claim, which is an apparatus-type of claim. Thus, it is unclear how the “use” step structurally further defines the claimed circuit or system. For examination purposes, the claim language will be given the appropriate weight and interpreted as functional claim language.
Claim 18 is rejected for the following reasons: 1) the preamble is unclear because it recites “comprising or consisting”; 2) “preferably” makes claim unclear because it is unclear whether the claim language following this term is optional or not; 3) “a substrate” claimed the second time is unclear because it appears to recite the microfluidic chip is on one substrate, and the microfluidic circuit is on another substrate; 4) “with a or connectable” in “with a or connectable to a reaction chamber” makes claim unclear; 5) “the first sub-channel” and “the second sub-channel” raises an antecedent basis issue; 6) “connects or is connectable” in “connects or is connectable to the reaction chamber” makes the claim unclear; 6) “the fluidic flow controllers” raises an antecedent basis issue; 7) “to facilitate fluidic flow in a microfluidic channel (on-status) and/or actuatable to stop fluidic flow in a microfluidic channel (off-status)” is unclear because the claim language in parentheses is not positively claimed and it is unclear how this structurally further defines the claimed microfluidic circuit. Further, the microfluidic channel associate with the on-status and off-status raises an antecedent basis issue; 8) “suitable magnetic capturing carriers” is unclear. What makes the magnetic capturing carriers “suitable”?; 9) “suitable magnetic field” is unclear; 10) “suitable ultrasound” is unclear.
Claim Interpretation
The Office asserts that terms and phrases like “configured to” and “wherein” constitute recitations of intended use language for purposes of examination. The Office asserts that in the examined claims reciting such “configured to” language, the claim language that follows such recitations does not necessarily denote structure MPEP 2173.05(g). The functional limitation was evaluated and considered, for what it fairly conveys to a person of ordinary skill in the art. Similarly, a “wherein” clause may have a limiting effect on a claim if the language limits the claim to a particular structure. MPEP 2111.04. The determination of whether a “wherein” clause is a limitation in a claim depends on the specific facts of the case. While all words in each claim are considered in judging the patentability of the claim language, including functional claim limitations, not all limitations provide a patentable distinction.
During patent examination, the examined claims must be given their broadest reasonable interpretation consistent with the specification, unless a term has been given a special definition in the specification (“BRI”). See MPEP 2111.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Pourahmadi et al. (“Pourahmadi,” US 6440725) in view of Hong et al. (“Hong,” US Pub. No. 2013/0149791).
As to claims 1, 8, 14, 15 and 18, Pourahmadi discloses in fig. 2, for example, a microfluidic circuit for use in a microfluidic chip for isolating and purifying an analyte, preferably a nucleic acid, comprised in a biologic sample, wherein the microfluidic circuit is arranged in a substrate and comprises a first microfluidic channel (e.g. channel after 107, channel 121, channel 11, or channel 129) fluidicly connecting an outlet of a buffer chamber (e.g., 107, 109, 125 or 119) with an inlet of an elution chamber (119, 127 or 123) and a second microfluidic channel (121 or 135) fluidicly connecting an outlet of the elution chamber with an inlet of a waste chamber (139) and with a or connectable to a reaction chamber (143), wherein the second microfluidic channel is branched at a first junction (135) into two downstream sub-channels (see flow controllers 41A/B) of a first generation, wherein the first sub-channel connects to the inlet of the waste chamber and the second sub-channel connects or is connectable to the reaction chamber (see fig. 1), wherein the second sub-channel of first generation is branched at a second junction (see branched channels where channel goes to vent 145 and recirculates back to reaction chamber) into two downstream sub-channels of second generation, wherein a first sub-channel connects or is connectable to the reaction chamber and a second sub-channel is connected to the buffer chamber and is configured to facilitate fluidic flow in at least part of the second sub-channel of first generation and the second microfluidic channel in direction to the outlet of the elution chamber, wherein the fluidic flow direction is controlled by an arrangement of three or more fluidic flow controllers (see flow controllers 41A/B and 123; valves, or fluid diodes), wherein the fluidic flow controllers are independently actuatable to facilitate fluidic flow in a microfluidic channel (on-status) and/or actuatable to stop fluidic flow in a microfluidic channel (off-status). See e.g., col. 5, line 11 et seq.
Regarding claims 1, 8, 14, 15 and 18, Pourahmadi does not specifically disclose a second sub-channel is connected to the buffer chamber and is configured to facilitate fluidic flow in at least part of the second sub-channel of first generation and the second microfluidic channel in direction to the outlet of the elution chamber. Hong discloses in e.g., [0016] et seq., a biochip may include an inlet for injecting a sample, a reaction chamber containing a reagent to detect the sample, a sample injection channel connected to the inlet to inject the sample into the reaction chamber, a sample bypass channel connected to the inlet, the sample bypass channel being separated from the sample injection channel to prevent the sample from being injected into the reaction chamber, a sample exhaust channel connected to the sample bypass channel to exhaust the sample from the reaction chamber, an exhaust channel connected to both of the sample bypass channel and the sample exhaust channel, and an outlet connected to the exhaust channel and used to exhaust the sample from the exhaust channel. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include a bypass channel because a bypass channel may be easily and simply formed by a simple method, such as an injection or extrusion molding, during the process of fabricating the biochip (e.g., [0044] of Hong).
As to claim 2, Pourahmadi disclose a third junction in fig. 2 and 16 of Pourahmadi, as shown in different junctions of Pourahmadi’s cartridge.
As to claims 3, 4 and 12, “configured to” is intended use and/or functional claim language, but see col. 5, line 11 et seq. of Pourahmadi.
As to claims 5-7 and 9, see e.g., col. 3, line 8 et seq. of Pourahmadi.
As to claim 10, see e.g., col. 18, line 39 et seq. of Pourahmadi.
As to claims 11 and 13, see col. 2, line 46 et seq. of Pourahmadi.
As to claims 16-17, see col. 19, line 65 et seq. of Pourahmadi.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LORE RAMILLANO JARRETT whose telephone number is (571)272-7420. The examiner can normally be reached Monday to Friday.
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, Lyle Alexander can be reached at 571-272-1254.
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.
/LORE R JARRETT/Primary Examiner, Art Unit 1797
1/24/2026