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 claims 1-9 in the reply filed on 02/09/2026 is acknowledged.
Claims 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 02/09/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 9/10/2024 is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 17/835,626 (claim set of 12/31/2025) (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Application 18/326,027
Application 17/835,626- claim set of 12/31/2025
Claim 1
Claim 5/1
A sperm sorting device adapted to collaborate with a temperature controlling component, comprising:
[claim 1] An apparatus for processing sperm, comprising:
an upper portion formed with an upper chamber; a lower portion formed with a lower chamber, wherein the upper chamber and the lower chamber are disposed vertically,
[claim 1]an upper chamber and a bottom chamber arranged vertically;
and the temperature controlling component is adapted to be disposed outside the upper portion or the lower portion to make the temperature of the upper chamber higher than the lower chamber;
The temperature controlling component is not positively recited. [claim 1] ‘626 teach does teach, “a temperature control unit for maintaining the temperature of the upper chamber higher than that of the bottom chamber to establish a temperature gradient..”
and a porous layer disposed between the upper chamber and the lower chamber, adapted to allow sperms to pass through from the lower chamber to the upper chamber and adapted to form a temperature difference between the upper chamber and the lower chamber.
[claim 1] a porous layer that placed at an interface between the upper and bottom chamber to allow communication of particles between them and delay thermal equilibrium therebetween;
[claim 5] wherein the pore diameter of the porous layer is between 8 to 20 mm.
Interpreted as a functional limitation. The reference application teaches a porous layer that is structurally capable of allowing sperms to pass through (sperms can pass through pores of diameter between 8 to 20 mm) and providing a physical barrier between the upper and bottom chambers that delay heat transfer and consequently forms a temperature difference between the chambers.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of copending Application No. 17/835,626 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because
Application 18326027
Application 17/835,626- claim set of 12/31/2025
Claim 9
Claim 5/1
The sperm sorting device according to claim 1, wherein the porous layer is formed with a plurality of holes, and pore sizes of the plurality of holes are 8-20 mm.
The apparatus of claim 1, wherein the pore diameter of the porous layer is between 8 to 20 mm.Note: "mm" in the instant is interpreted as "mm" , see Claim Interpretation below
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Interpretation
Claim 4 recites the limitation “…the lower surface [of the top plate] is an incline” in lines 1-2. Fig. 3 shows the lower surface of top plate 116 comprise an incline and a planar portion, but not the entire the lower surface is an incline, and thus “is an incline” is interpreted have an overall inclining contour.
Claim 9 recites the limitation “…pore sizes of the plurality of holes are 8 – 20 mm” in line 2 which corresponds to para. 0018 and 0041 of the Specification. However, in light of the size of sperms (what is being filtered/ sorted) which is significantly smaller than the millimeter (mm) scale, the scale should be micrometer (micron or µm). Furthermore, the parent application (app. 17/835,626) indicates the pore sizes to be in the range of 8-20 µm (claim 5 and para. 0034) and thus suggests that the scale should be in the micron range. For this reason, the limitation is examined based on the micron scale.
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 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vollmer (US 20180282676 A1).
Regarding claim 1, Vollmer teaches a sperm sorting device (Figs. 2A-2C) adapted to collaborate with a temperature controlling component, comprising:
an upper portion (30 and 40) formed with an upper chamber (42);
a lower portion (10) formed with a lower chamber (12), wherein the upper chamber and the lower chamber are disposed vertically (Figs. 2A and 2C), and the temperature controlling component is adapted to be disposed outside the upper portion or the lower portion to make the temperature of the upper chamber higher than the lower chamber (the temperature controlling component is not positive. Since this limitation is directed to the temperature controlling component, it does not further structurally limit the invention)(See also para. 0065, temperature gradient); and
a porous layer (20) disposed between the upper chamber and the lower chamber (Fig. 1A), adapted to allow sperms to pass through from the lower chamber to the upper chamber (para. 0101, spermatozoa migrates from 12 to 42 through the separation layer 20) and adapted to form a temperature difference between the upper chamber and the lower chamber (interpreted as a functional limitation. Para. 0030 teaches the porous layer is a cellulose-, paper-, or polymer based membrane, which provides a thermal insulating physical barrier between reservoirs 12 and 42 and thus slows down heat transfer and consequently forms a temperature difference between the reservoirs).
Regarding claim 2, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 1. Vollmer further teaches wherein the upper portion comprises a top plate (40) disposed at a top side of the upper chamber (Fig. 2C).
With regards to the limitation “the temperature controlling component is adapted to transfer heat uniformly through the top plate to the upper chamber,” the temperature controlling component is not positive. Since this limitation is directed to the temperature controlling component, it does not further structurally limit the invention.
Regarding claim 3, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 2. Vollmer further teaches wherein the top plate (40) has a lower surface (the lower surface of layer 40 from the peak of the roof to the edge of the right side of the device as shown in Fig. 2C)(see annotated Fig. A) and is formed with a through-hole (port 4A) disposed at a higher end of the lower surface (the roof part of the lower surface)(see annotated Fig. A), and varied height difference is formed between the lower surface and a bottom of the upper chamber (Fig. 2C).
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Figure A. Annotated Fig. 2C of Vollmer.
Regarding claim 4, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 3. Vollmer further teaches wherein the lower surface is an incline (annotated Fig. A, the lower surface has an overall inclining contour. See also the Claim Interpretation section above).
Regarding claim 6, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 1. Vollmer further teaches wherein the upper portion (30 and 40) is further formed with a collecting port (A4) communicating with the upper chamber (42)(Fig. 2C and para. 0098).
Regarding claim 7, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 1. Vollmer further teaches wherein the upper portion is further formed with an injecting port (A3) communicating with the lower chamber 12 (Fig. 2C, 2D and paras. 0098 and 0100).
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.
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 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Vollmer (US 20180282676 A1).
Regarding claim 5, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 3.
Vollmer does not explicitly teach wherein a cross-sectional area of the through-hole (port A4) is less than 10% of an area of the lower surface.
However, Vollmer teaches the diameter of port A4 is a result-effective variable. Specifically, Vollmer teaches inlet and outlet ports (A1-A4) are to be modified to minimize convection, fluid resistance and turbulent (para. 0039), and the diameter of the ports is one of the variables that determine the fluid resistance and flow pattern/regime (turbulent vs. laminar). Since this particular parameter (diameter of port A4) is recognized as a result-effective variable (i.e. a variable which achieves a recognized result), the determination of the optimum or workable ranges of said variable can be characterized as routine experimentation. See MPEP 2144.05 (II)(A). Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to modify the diameter of the A4 such that cross-sectional area of the through-hole (port A4) is less than 10% of an area of the lower surface because it would have been within the ambit of one of ordinary skill in the art to arrive at through routine experimentation.
Regarding claim 9, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 1. Vollmer further teachers wherein the porous layer is formed with a plurality of holes (para. 0032).
Vollmer does not teach the pore sizes of the plurality of holes are 8-20 mm (interpret as 8-20 mm, see the “Claim Interpretation” section above).
However, Vollmer further teaches the pore sizes of the plurality of holes are 20-500 mm.
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have selected the pore sizes of the plurality of holes to be 20 mm, the portion of the teachings of Vollmer that corresponds to the claimed range (MPEP 2144.05(I)) because it would have been within the ambit of one of ordinary skill in the art to arrive at due to overlapped range.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Vollmer (US 20180282676 A1) in view of Demirci et al. (US 20160290913 A1).
Regarding claim 8, Vollmer teaches all of the elements of the current invention as stated above with respect to claim 1.
Vollmer further teaches the wherein a material of the porous layer is a polymer membrane, but does not explicitly teach what type of polymer the membrane is, and thus fails to teach wherein a material of the porous layer selected from the group consisting of polycarbonate, polyvinyl alcohol, polypropylene, polytetrafluoroethylene, polystyrene, polyethylene terephthalate, polyvinylidene fluoride, polyamide, non-woven fabric and polyurethane.
However, Demirci teaches a sperm sorting device comprising a upper chamber and a lower chamber, and a porous layer disposed between the upper chamber and the lower chamber (Fig. 1B and para. 0036). Demirci further teaches the porous layer is polycarbonate filter (para. 0036).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the material of polymer membrane taught by Vollmer with polycarbonate as taught by Demirci because one of ordinary skill in the art would accordingly have recognized the polycarbonate would result in the predictable result of providing a material for the polymer membrane suitable for sperm sorting (Demirci, para. 0036) (MPEP 2143)(I)(B).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Eisenbach et al. (US 20080299537 A1) teaches a sperm sorting device comprising two compartments of different temperatures, but the compartment are not in a vertically stacked orientation. Rakhymzhanov et al. (WO 2021124111 A) teaches a sperm sorting device comprising two compartments that are stacked vertically (Fig. 1), and separated by a porous layer with pores (micro tunnels) of a diameter of 20 mm (para. 0027), but thermotaxis is not used as part of the sorting mechanism.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAY CHIU whose telephone number is (571)272-1054. The examiner can normally be reached 9 am - 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Maris Kessel can be reached at 571-270-7698. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.L.C./Examiner, Art Unit 1758
/MARIS R KESSEL/Supervisory Patent Examiner, Art Unit 1758
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