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 .
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 1-2, 18-19 and 21-35 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.
In claim 1, the recitation “adjustable control a pitch of the plurality of electrodes by applying a stimulus signal to electrodes of the first electrode group” is unclear. Specifically, it is unclear how to “adjustably control a pitch…by applying a stimulus signal…”. According to the specification, “a pitch of the electrode array may be selected on the order of or smaller than a size of typical cells” (see [0084]. Therefore, it is understood that the pitch can be selected according to the size of the typical cells. However, none of the descriptions in the current specification explains how to “adjustably control a pitch…by applying a stimulus signal…” as claimed in claim 1.
In claims 18 and 31, the recitation “selecting a pitch…from among multiple pitch values by defining a first electrode group comprising one or more electrodes” is unclear. Specifically, it is unclear how to “selecting a pitch…by defining a first electrode group…”. According to the specification, ”a pitch of the electrode array may be selected on the order of or smaller than a size of typical cells” (see [0084]). Therefore, it is understood that the pitch can be selected according to the size of the typical cells. However, none of the descriptions in the current specification explains how to “selecting a pitch…by defining a first electrode group…” as claimed in claims 18 and 31.
Claims 2, 19, 21-30 and 32-35 are rejected for their dependence upon the rejected independent claims, 1, 18 and 31.
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.
Claims 1-2, 18 and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 18 and 19 of U.S. Patent No. 11,747,321 (thereafter referred to as Patent ‘321) in view of Farrow et al. (U. S. Pub. 2015/0276649). Although the claims at issue are not identical, they are not patentably distinct from each other.
As for claim 1, Patent ‘321 discloses an apparatus for mapping one or more cells (see the apparatus in claim 1 of Patent ‘321), the apparatus comprising:
a semiconductor substrate (see claim 1, line 3 of Patent ‘321), comprising:
a plurality of electrodes exposed at a surface of the semiconductor substrate (see claim 1, lines 4-5 of Patent ‘321);
active circuitry (see claim 1, lines 6-7 of Patent ‘321) coupled to the plurality of electrodes and configured to:
applying a stimulus signal to electrodes of a first electrode group (see claim 2 of Patent ‘321); and
measure a set of cross-electrode currents between a first electrode group of the plurality of electrodes and some or all of the remaining electrodes (see claim 1, lines 8-10 of Patent ‘321); and
one or more processors configured to:
receive the measured cross-electrode currents from the active circuitry and to correlate the one or more cells with the set of cross-electrode currents (i.e., correlate the one or more cells with the set of cross-electrode currents by generating a map of the one or more cells of representative values based on the set of cross-electrode currents, see claim 1, lines 12-20 of Patent ‘321).
Still referring to claim 1, Patent ‘321 does not specifically disclose adjustably control a pitch of the plurality of electrodes.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is adjusted or selected to be equal or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
The person of ordinary skill in the art would recognize that adjusting or selecting the pitch of the electrodes based on the size of the biological cells under test is just routine practice in the art, in order to determine the presence of a single cell, and it does not make the current application patentably distinct from Patent’321.
As for claim 2, Patent ‘321 discloses the apparatus of claim 1, wherein the active circuitry is further configured to apply a reference voltage at the remaining electrodes where the cross-electrode currents are being measured from (see claim 2 of Patent ‘321).
As for claim 18, Patent ‘321 discloses a method (see the method claim 18 of Patent ‘321) for mapping one or more cells in contact with an electrode array disposed on a surface area of a semiconductor substrate, each electrode in the electrode array having an electrode location on the surface area, the method comprising:
for each electrode of a first electrode group of the electrode array (see claim 18, lines 4-5 of Patent ‘321):
applying a stimulus signal at the electrode (see claim 18, line 6 of Patent ‘321);
measuring a set of cross-electrode currents between the one or more electrode and some or all of the remaining electrodes in the electrode array (see claim 18, lines 7-9 of Patent ‘321);
generating a representative value associated with the electrode location of the one or more electrodes based on the set of cross-electrode currents (see claim 18, lines 10-13 of Patent ‘321); and
generating a map of representative values on the surface area based on the generated representative values and respective associated electrode locations of the one or more electrodes (see claim 18, lines 14-17 of Patent ‘321).
Still referring to claim 18, Patent ‘321 does not specifically disclose selecting a pitch of the electrode from among multiple pitch values.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is adjusted or selected to be equal or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
The person of ordinary skill in the art would recognize that selecting the pitch of the electrodes based on the size of the biological cells under test is just routine practice in the art, in order to determine the presence of a single cell, and it does not make the current application patentably distinct from Patent’321.
As for claim 31, Patent ‘321 discloses a system (see the system in claim 19 of Patent ‘321) for mapping one or more cells, the system comprising:
a plurality of electrodes exposed at a surface area of a semiconductor substrate (see claim 19, lines 3-4 of Patent ‘321);
circuitry disposed in the semiconductor substrate that is controllable to apply a stimulus signal and/or measure a current at one or more electrodes of the plurality of electrodes (see claim 19, lines 5-8 of Patent ‘321);
at least one non-transitory computer-readable medium having stored thereon executable instructions; and at least one processor programmed by the executable instructions to perform a method comprising acts of (see claim 19, lines 9-12 of Patent ‘321):
for each electrode in the first electrode group:
controlling the circuitry to apply a stimulus signal at the electrode (see claim 19, lines13-15 of Patent ‘321);
controlling the circuitry to measure a set of cross-electrode currents between the electrode and some or all of the remaining electrodes in the plurality of electrodes (see claim 19, lines 16-18 of Patent ‘321);
generating a representative value associated with the electrode location of the electrode based on the set of cross-electrode currents (see claim 19, lines 19-22 of Patent ‘321);
and correlating the generated representative values with respective associated electrode locations of the plurality of electrodes (i.e., correlating by generating the map of representative values with respective associated electrode locations of the electrodes, see claim 19, lines 23-26 of Patent ‘321).
Still referring to claim 31, Patent ‘321 does not specifically disclose selecting a pitch of the electrodes from among multiple pitch values.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is adjusted or selected to be equal or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
The person of ordinary skill in the art would recognize that selecting the pitch of the electrodes based on the size of the biological cells under test is just routine practice in the art, in order to determine the presence of a single cell, and it does not make the current application patentably distinct from Patent’321.
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.
Claims 1, 2, 18-19, 21-26, 29-35 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (U. S. Pub. 2016/0245788), in view of Farrow et al. (U. S. Pub. 2015/0276649).
As for claim 1, Wang et al. discloses an apparatus (See Figs. 1, 2, 6-8 and 16) for mapping one or more cells (102), the apparatus comprising:
a semiconductor substrate (substrate of the chip 101), comprising:
a plurality of electrodes (see the plurality of electrodes in each pixel groups) exposed at a surface of the semiconductor substrate;
active circuitry (see the circuitry shown in Fig. 2) coupled to the plurality of electrodes and configured to:
applying a stimulus signal (i.e., applying voltage to the electrode 5, see Figs. 6 and 7);
measure (using current sensing electrode shown in Fig. 7) a set of cross-electrode currents between a first electrode group of the plurality of electrodes and some or all of the remaining electrodes (e.g., electrode 5 to apply voltage and electrodes 1-4 for I-sensing); and
one or more processors (205 in Fig. 2) configured to receive the measured cross-electrode currents from the active circuitry and to correlate the one or more cells with the set of cross-electrode currents (i.e., Correlating the cells 102 with the measured cross-electrode currents and impedances to determine cell attachment, cells characterization or drug screening, see [0064]—[0067]).
Still referring to claim 1, Wang et al. does not specifically disclose adjustably control a pitch of the plurality of electrodes.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is adjusted or selected to be equal to or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Wang et al. to adjust or select the pitch of the electrodes based on the size of the biological cells under test, for the purpose of determining the presence of a single cell (see [0018] and abstract in Farrow).
As for claim 2, Wang et. al. discloses the apparatus of claim 1, wherein the active circuitry is further configured to apply a reference voltage at the remaining electrodes (1-4) where the cross-electrode currents are being measured from (see Fig. 7).
As for claim 18 and 21 Wang et al. discloses (See Figs. 1, 2, 6-8 and 16) a method for mapping one or more cells (102) in contact with an electrode array (see the plurality of electrodes in each pixel groups) disposed on a surface area of a semiconductor substrate (substrate of the chip 101), each electrode in the electrode array having an electrode location on the surface area, the method comprising:
for each electrode of the first electrode group of the electrode array:
applying a stimulus signal at the electrode (applying voltage at electrode 5);
measuring a set of cross-electrode currents (see [0063]) between the one or more electrode of the first electrode group and some or all of the remaining electrodes in the electrode array;
generating a representative value (i.e., generate the impedance value, see [0063]) associated with the electrode location of the one or more electrodes of the first electrode group based on the set of cross-electrode currents; and
generating a map of representative values on the surface area based on the generated representative values and respective associated electrode locations of the one or more electrode of the first electrode group; wherein the first electrode group comprises all electrodes in the electrode array (see the impedance mapping in Figs. 8 and 16).
Still referring to claims 18 and 21, Wang et al. does not specifically disclose selecting a pitch of the electrode array from among multiple pitch values.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is adjusted or selected to be equal to or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Wang et al. to select the pitch of the electrode array from among multiple pitch values, based on the size of the biological cells under test, for the purpose of determining the presence of a single cell (see [0018] and abstract in Farrow).
As for claim 25, Wang et al. discloses the method of claim18, wherein the map comprises a plurality of pixels, each pixel associated with a representative value (see the plurality of pixels shown in Figs. 8 and 16).
As for claim 29, Wang et. al. discloses the method of claim 18, wherein electrode locations in the electrode array are arranged in a plurality of rows and a plurality of columns (see Fig 6).
As for claim 31, Wang et. al. discloses a system (See Figs. 1, 2, 6-8 and 16) for mapping one or more cells (102), the system comprising:
a plurality of electrodes (see the plurality of electrodes in each pixel groups) exposed at a surface area of a semiconductor substrate (substrate of the chip 101);
circuitry disposed in the semiconductor substrate that is controllable to apply a stimulus signal and/or measure a current at one or more electrodes of the plurality of electrodes (see [0063] and Fig. 7);
at least one non-transitory computer-readable medium having stored thereon executable instructions; and at least one processor (the data processing portion 205 in Fig. 2 or the controller [0035]) programmed by the executable instructions to perform a method comprising acts of:
for each electrode in the first electrode group:
controlling the circuitry to apply a stimulus signal (i.e., applying voltage at one electrode 5 in Fig. 7) at the electrode;
controlling the circuitry to measure a set of cross-electrode currents between the electrode and some or all of the remaining electrodes in the plurality of electrodes (i.e., measuring current at electrodes 1-4);
generating a representative value (i.e., generate the impedance values based on the current values, [0063]) associated with the electrode location of the electrode based on the set of cross-electrode currents; and
correlating the generated representative values with respective associated electrode locations of the plurality of electrodes (i.e., Correlating the cells 102 with the measured cross-electrode currents and impedances to determine cell attachment, cells characterization or drug screening, see [0064]—[0067]).
Still referring to claim 31, Wang et al. does not specifically disclose selecting a pitch of the plurality of electrodes from among multiple pitch values.
Farrow et al. discloses a device for testing biological cells, wherein the pitch or distance between electrodes is selected to be equal to or less than the size of the biological cells to determine the presence of a single biological cell (see [0018] and abstract).
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Wang et al. to select the pitch of the electrodes based on the size of the biological cells under test, for the purpose of determining the presence of a single cell (see [0018] and abstract in Farrow).
As for claim 23, Wang et al. discloses the method of claim 18, further comprising: based on the generated map of representative values, identifying a cluster of cells (102) adjacent the semiconductor substrate (substrate of the chip 101) with single cell resolution.
As for claims 24 and 34, Wang et al. discloses the method and system of claims 18 and 31 as discussed above, wherein correlating the generated representative values with respective associated electrode locations of the plurality of electrodes comprises generating a map of representative values on the surface area based on the generated representative values and respective associated electrode locations of the plurality of electrodes (i.e., see the map or images shown in Fig. 16)., wherein the generated map is a first map generated at a first time (see the first map at T=0) and comprises a plurality of pixels (pixels in group #1, #2), and the method further comprises:
generating a second map (see the second map at T=8 mins, or 30 mins) of representative values on the surface area at a second time subsequent to the first time, wherein the second map comprises a plurality of pixels;
determining a first count of pixels in the first map having a representative value within a predetermined range (first count of pixels in the first map at T=0);
determining a second count of pixels (second count of pixels in the second map at T=8 or 30 mins) in the second map having a representative value within the predetermined range; and
determining a cell adhesion characteristic based on a comparison of the first count with the second count (determining cell detachment based on the comparison of the first map and second map).
As for claims 26 and 35, Wang et al. discloses the method and system of claims 18 and 31, wherein correlating the generated representative values with respective associated electrode locations of the plurality of electrodes comprises generating a map of representative values on the surface area based on the generated representative values and respective associated electrode locations of the plurality of electrodes (i.e., Correlating the cells 102 with the measured cross-electrode currents and impedances to determine cell attachment, cells characterization or drug screening, see [0064]—[0067]), and wherein the first electrode group comprises a first electrode (first electrode 5) having a first electrode location and a second electrode (electrode 1-4) having a second electrode location, the first electrode and the second electrode adjacent each other on the surface area (see Fig. 7), and wherein the map comprises a first pixel and a second pixel corresponding to the first electrode location and the second electrode location (see Fig. 12A), respectively, wherein generating the map comprises: determining an up-scaled representative value associated with a third pixel between the first and second pixels (i.e., determining the up-scaled impedance value based on the current values between the first and second pixels).
As for claim 30, Wang et al. discloses the method of claim 29, wherein the electrode array has M rows and N columns, and the map has at least 3M x 3N pixels (see the plurality of pixels shown in Figs. 8 and 16).
As for claims 19 and 32-33, Wang et al. in view of Farrow et al. discloses the method and system of claims 18 and 31, wherein generating the representative value comprises: selecting a maximum current values of the set of cross-electrode currents as the representative value, and calculating an impedance based on the selected current values ([0063]).
Wang et al. in view of Farrow et al. does not specifically disclose selecting a maximum current value of the set of cross-electrode current as the representative value, and calculating the impedance based on the selected maximum current value as the representative value.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to further modify Wang et al. in view of Farrow et al. to select a maximum current values of the set of cross-electrode currents and calculate the impedance based on the selected maximum current value, for the purpose of obtaining more accurate impedance mapping of the desired area on the chip.
As for claim 22, Wang et al. in view of Farrow et al. discloses the method of claim 18 as discussed above.
Wang et al. in view of Farrow et al. does not specifically disclose wherein the map has a spatial resolution of 20 um or less.
It would have been obvious to a person of ordinary skill in the art, before the effective filing date of the claimed invention to modify Wang et al. to choose to design the map spatial resolution to be any desired resolution, such as 20 um or less as dependent upon the size of the cells or the specific requirement of the different applications involved.
Allowable Subject Matter
Claims 27-28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments filed on February 11, 2026 have been considered but are moot because the new ground of the 103 rejection based on Wang et al. in view of Farrow et al.
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 AMY HE whose telephone number is (571)272-2230. The examiner can normally be reached 9:00am--5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Huy Phan can be reached at (571) 272-7924. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMY HE/Primary Examiner, Art Unit 2858