DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-8, in the reply filed on 08/05/2026 is acknowledged.
Claims 9-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 08/05/2026.
Claim Interpretation
Regarding limitations recited in claims 1-8 which are directed to a manner of operating the disclosed digital microfluidic device, it is noted that neither the manner of operating a disclosed device nor material or article worked upon further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. See MPEP § 2114 and 2115. Further, it has been held that process limitations do not have patentable weight in an apparatus claim. See Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969) that states “Expressions relating the apparatus to contents thereof and to an intended operation are of no significance in determining patentability of the apparatus claim.”
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 1-8 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.
Regarding Claim 1, Lines 2-5, the recitation of “each source line being connected to a plurality of the first electrodes via their associated transistors” appears to contradict the recitation of “a plurality of first electrodes each having a transistor associated therewith” since they appear to describe two distinct circuit arrangements. The Applicants are advised, amending the claim to recite “a first substrate comprising a plurality of first electrodes each having a transistor associated therewith, the first substrate further comprising a plurality of source lines, each source line bring connected to a first electrode via their associated transistor…” is one way to resolve the indefiniteness issues.
Claims 2-4 depend on Claim 1.
Claim 5 recites the limitation "the second fluid" in line 2, There is insufficient antecedent basis for this limitation in the claim. The Applicants are advised, amending the claim to depend on Claim 4, which positively recites “a second fluid”, is one way to resolve the indefiniteness issues.
Claim 5 recites the limitation "the first fluid" in line 2. There is insufficient antecedent basis for this limitation in the claim. The Applicants are advised, amending the claim to depend on Claim 4, which positively recites “a first fluid”, is one way to resolve the indefiniteness issues.
Claims 6-7 depend on Claim 1.
Regarding Claim 8, Line 2, it is unclear which “source line” the recitation of “the source line” in the claim is referring towards. The Applicants are advised, amending the limitation to recite “each source line” is one way to resolve the indefiniteness issues.
Appropriate corrections are required.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al. (Built-In Self-Test for Micro-Electrode-Dot-Array Digital Microfluidic Biochips).
Regarding claim 1, Li discloses a digital microfluidic device (Fig. 1; Fig. 3; Fig. 5; Fig. 6), comprising:
a first substrate (Fig. 1, see: Bottom plate) comprising a plurality of first electrodes (Fig. 1, see: Control electrodes) each having a transistor associated therewith (Fig. 5-6, see: EDMOS of CVD for each MC), the first substrate further comprising a plurality of source lines (Fig. 5-6, see: each EDMOS has its own source ), each source line being connected to a plurality of the first electrodes via their associated transistors (Fig. 5-6, see: EDMOS of CVD for each MC, each EDMOS has its own source), and a first dielectric layer covering the first electrodes and their associated transistors (pg. 2/II. DIGITAL MICROFLUIDICS AND MEDIA/para. 2, see: a dielectric layer and a hydrophobic layer are deposited above the microelectrodes);
a second substrate (Fig. 1, see: Top glass plate) spaced from the first substrate (Fig. 1, see: Bottom plate) and comprising at least one second electrode (Fig. 1, see: Ground electrode) and a second dielectric layer covering the second electrode (pg. 2/II. DIGITAL MICROFLUIDICS AND MEDIA/para. 2, see: a dielectric layer and a hydrophobic layer are deposited above the microelectrodes); and
a microfluidic region between the first and second substrates (Fig. 1, see: volume between the Top glass plate and Bottom plate),
wherein at least one source line is arranged to measure the capacitance between at least one of the first electrodes connected thereto and the at least one second electrode (Fig. 5-6, see: output of Top electrode and Microelectrode is coupled to the source of EDMOS), and thereby determine the presence or absence of a fluid droplet between said first electrodes and the at least one second electrode (Fig. 5-6, see: Cdrop).
Regarding claim 2, Li further discloses an alternating voltage is applied to the at least one second electrode (Claim 2 is directed towards the intended use of the instantly claimed digital microfluidic device. A recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform, in this particular case, the analogous at least one second electrode is fully capable of having an alternating volage applied to it).
Regarding claim 3, Li further discloses each first electrode is attached to a capacitor via the transistor (Fig. 5-6, see: EDMOS is arranged between the Microelectrode and Cdesign in the CVD circuit).
Regarding claim 4, Li further discloses the microfluidic region between the first and second substrates is filled with a first fluid (Fig. 1, see: Filler Fluid) and contains droplets of a second fluid immiscible with the first fluid (Fig. 1, see: Droplet).
Regarding claim 5, Li further discloses the second fluid is aqueous (Fig. 1, see: Droplet and Hydrophobic layers) and the first fluid is non-aqueous (Fig. 1, see: Filler Fluid; pg. 5/col. 2/para. 4, see: filler medium (silicone oil)).
Regarding claim 6, Li further discloses the first dielectric layer is hydrophobic or has a hydrophobic layer superposed thereon (Fig. 1, see: Hydrophobic layer on Bottom plate; pg. 2/II. DIGITAL MICROFLUIDICS AND MEDIA/para. 2, see: a dielectric layer and a hydrophobic layer are deposited above the microelectrodes).
Regarding claim 7, Li further discloses the second dielectric layer is hydrophobic or has a hydrophobic layer superposed thereon (Fig. 1, see: Hydrophobic layer on Top glass plate; pg. 2/II. DIGITAL MICROFLUIDICS AND MEDIA/para. 2, see: a dielectric layer and a hydrophobic layer are deposited above the microelectrodes).
Regarding claim 8, Li further discloses a capacitor connected to the source line (Fig. 5-6, see: Cdrop).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J EOM whose telephone number is (571)270-7075. The examiner can normally be reached Monday-Friday (9:00AM-5:00PM).
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 5712721254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT J EOM/ Primary Examiner, Art Unit 1797
Prosecution Insights