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 .
Information Disclosure Statement
The IDS filed 10/31/2024 has been considered by the Examiner.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Priority of US application 63/340511 filed 5/11/2022 is acknowledged.
Status of Claims
Amendments to the claims are acknowledged. Claim 21 is new.
Claims 1-11 and 13-14 are withdrawn. Claim 12 is cancelled.
Claims 15-21 are under examination.
Claim Election/Restriction
Election without Traverse
Applicant’s election without traverse of claims 15-20 in the reply filed on 9/30/2025 is acknowledged.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/30/2025.
Claim Rejections - 35 USC § 101
The instant rejection is maintained and modified in view of Applicant’s amendments filed 7/6/2026.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 15-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Step 1: Process, Machine, Manufacture or Composition
Claims 15-20 are drawn to a method, so a process.
Step 2A Prong One: Identification of an Abstract Idea
The claim(s) recite(s) :
1. Extracting micro-patterns associated with a cellular event from the plurality of capacitance measurements
This limitation reads on processes that can be performed by the human mind and with math and is therefore an abstract idea.
2. identifying a trend in the plurality of capacitance measurements.
This step can be performed by the human mind by looking at numerical values of capacitance measurement. The step is therefore an abstract idea.
3. identifying a conjugate trend in the plurality of capacitance measurements.
This step can be performed by the human mind by analyzing capacitance measurements and recognizing related trends. The step is therefore an abstract idea.
4. calculating a degree of symmetry between the trend and the conjugate trend wherein the degree of symmetry is insensitive to amplitude scaling.
This step can be performed by the human mind by analyzing whether there are commonalities in capacitance measurements. The step is therefore an abstract idea.
4. identifying the cellular event based on the extracted micro-pattern.
This step can be performed by the human mind by considering the micro-pattern data and making a mental correlation to known cellular events. The step is therefore an abstract idea.
Claims 16-21 are drawn to further steps of data analysis and manipulation and are therefore also abstract ideas.
Step 2A Prong Two: Consideration of Practical Application
The claimed method results in a step of associating information which is a cellular event with a micro-pattern derived from capacitance data. The claims do not recite any additional elements that integrate the abstract idea into a practical application.
This judicial exception is not integrated into a practical application because the claims do not meet any of the following criteria:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than
a drafting effort designed to monopolize the exception.
Step 2B: Consideration of Additional Elements and Significantly More
The claimed method also recites "additional elements" that are not limitations drawn to an abstract idea. The recited additional elements are drawn to:
1. obtaining a plurality of capacitance measurements over a period of time from a sensor in contact with a cell wherein the sensor is integrated on a metal-oxide semiconductor chip containing microfluidic network overlying the sensor.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because capacitance measurements of biological cells are well known, routine and conventional.
Chung et al. (2018) evidence a metal-oxide semiconductor chip with integrated microfluidics (Title, Abstract and Figure 1) for impedance measurements of single cells. It is noted that impedance is mathematically inversely proportional to capacitance.
Zhang et al. (2021) evidence metal-oxide semiconductor impedance devices (CMOS)(page 4, par. 2 and page 11, par. 1) with integrated microfluidics.
Sohn et al. (2000) evidence “capacitance cytometry” where biological cells are measured one by one (Title). Sohn et al. teach an integrated microfluidic chip made from gold microelectrodes, constituting the sensor, onto a glass or quartz substrate (page 10687, col. 2, par 3).
Ghenim et al. (2010) evidence a silicone-based chip (page 2547, col. 2, par. 1) with an electrode (page 2547, col. 1, par. 2) for capacitance monitoring of single cell mitosis (Figure 3).
Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea recited in the instantly presented claims into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself. Therefore, the claim(s) are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed 7/6/2026 have been fully considered but they are not persuasive.
Applicants argue (Remarks, page 1) that the claims recite meaningful improvements to cell identification and classification in the technology of cellular assays and are therefore not directed to an abstract idea. Applicants argue the Desjardins decision regarding improvement to the technical field.
In response, the improvement, if any is not reflected in the claims. Claim 15 is directed to capacitance data collection by a physical chip and a generic analysis resulting in “identifying a cellular event.” Applicants have not clearly stated what the improvement is because there are no recited additional elements reflecting the improvement to technology under Step 2A Prong Two. The abstract idea itself cannot furnish the improvement to technology. Also, the identification of the cellular event is not integrated into any additional elements. Cellular events of single cells with capacitance measurements have long been known. It is unclear how the instant analysis improves the functioning of the chip (i.e. particular machine) because the chip serves to collect the capacitance measurements that are analyzed by the abstract idea. Furthermore, the components of the recited chip (i.e. metal-oxide semiconductor containing microfluidic network overlying the sensor) are tangential to the analysis steps. The same capacitance data can be collected with any single cell capacitance measurement device, which are well known as evidenced above under Step 2B. Under Step 2B, as evidenced by Zang et al., Chung et al., Sohn et al. and Ghenim et al., capacitance measurements for determining singular cell migration and mitosis are well known, routine and conventional.
Applicants argue (Remarks, page 2, par. 3) that claim 1 recites a sensor integrated on a complementary metal-oxide semi-conductor chip which permit capacitance sensing for single cells. Applicants argue that the sensor is integral to the recited method.
In response, the recited chip is part of a preliminary step drawn to routine data collection which is deemed to be extra-solution activity as set forth in MPEP 2106.05(g). Moreover, a semiconductor chip containing a microfluidic network is evidenced to be routine, conventional and well understood. Zang et al., Chung et al., Sohn et al. and Ghenim et al. set forth various chips for impedance/capacitance sensing of cells including metal-oxide fluidic based systems.
Claim Rejections - 35 USC § 112-2nd paragraph
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 15-21 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 pre-AIA the applicant regards as the invention.
Claim 15 has been amended to recite identifying the cellular event based on “the extracted micro-pattern.” There is lack of antecedent basis support for “the extracted micro-pattern.” The claim sets forth “extracting micro-patterns” and a series of steps that do not result in a micro-pattern extraction. Therefore it is unclear which, if any, micro-pattern “the extracted micro-pattern” is referring to.
Claim Rejections - 35 USC § 103
The rejection of claims 15-20 under 35 U.S.C. 103(a) as being unpatentable over Senevirathna et al. is withdrawn in view of amendments filed 7/6/2026.
E-mail communication Authorization
Per updated USPTO Internet usage policies, Applicant and/or applicant’s representative is encouraged to authorize the USPTO examiner to discuss any subject matter concerning the above application via Internet e-mail communications. See MPEP 502.03. To approve such communications, Applicant must provide written authorization for e-mail communication by submitting the following statement via EFS Web (using PTO/SB/439) or Central Fax (571-273-8300):
Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with the undersigned and practitioners in accordance with 37 CFR 1.33 and 37 CFR 1.34 concerning any subject matter of this application by video conferencing, instant messaging, or electronic mail. I understand that a copy of these communications will be made of record in the application file.
Written authorizations submitted to the Examiner via e-mail are NOT proper. Written authorizations must be submitted via EFS-Web (using PTO/SB/439) or Central Fax (571-273-8300). A paper copy of e-mail correspondence will be placed in the patent application when appropriate. E-mails from the USPTO are for the sole use of the intended recipient, and may contain information subject to the confidentiality requirement set forth in 35 USC § 122. See also MPEP 502.03.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anna Skibinsky whose telephone number is (571) 272-4373. The examiner can normally be reached on 12 pm - 8:30 pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Ram Shukla can be reached on (571) 272-7035. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Anna Skibinsky/
Primary Examiner, AU 1635
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