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 .
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 22, 25 and 57 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 22 – Claim 22 recites “the second sensor terminal is ether external to the restriction structure, or in the fluid cavity and between the opening and the second sensor terminal”. The Examiner submits this limitation is unclear as it is unclear as to where the second sensor may actually be located.
Regarding claim 25 – Claim 25 recites “wherein the valve is directly below the opening and the second sensor terminal, or between the first and second sensor terminals” The Examiner submits this limitation is unclear as it is unclear as to where the valve may actually be located.
Regarding claim 57 – Claim 57 recites “the fluid cavity has a ring footprint”. The Examiner submits the term “ring footprint” is unclear as it is unclear what portion of the fluid cavity is considered the “footprint” and what structure is described by the term ring footprint.
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.
Claims 1, 3-9, 11, 13-27, 37-39 and 57-61 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinz et al. (US 2014/0113303).
Regarding claims 1, 17, 20 and 21 – As shown in Figures 1 and 6, Hinz teaches an integrated circuit device (CMOS device) comprising a semiconductor die including a semiconductor substrate (CMOS device layer with semiconductor material), a dielectric layer on the semiconductor substrate, and a metallization structure in the dielectric layer, in which the semiconductor substrate includes sensor circuitry coupled to the metallization structure, the dielectric layer having a sensing side facing away from the semiconductor substrate; an insulation layer on the sensing side; a sensor terminal on the sensing side and coupled to the metallization structure; and a restriction structure including an opening, in which the restriction structure is on the encapsulates a fluid cavity on the sensing side, the sensor terminal (sensor plate) is in the fluid cavity, wherein the fluid cavity (610) contains a functionalization material (612, 614), the functionalization material (612, 614) configured to interact with a fluid in the fluid cavity (610) to produce a signal detectable by the sensor circuitry via the sensor terminal. With respect to the additional fluid cavities and opening claims 17 and 21, Hinz teaches a plurality of microwells forming sensors in Figure 1 and Paragraph 0026. See also Paragraphs 0034-0037 and Paragraphs 0042-0043.
Regarding claims 3, 4, and 18 – Hinz recites salts as part of the reaction mixture placed in the wells in Paragraph 0072.
Regarding claims 6-8 – Hinz teaches coating the microwells with a first chemical (612) and a second chemical (614) in Figures 6A-6F and Paragraphs 0036-0039.
Regarding claim 9 – Hinz discloses a silane coating that imparts a hydrophilic property on the microwell in Paragraph 0031.
Regarding claims 11 and 13-16 – Hinz teaches providing the IC device recited in claim 11 and then applying a liquid coating to form the functionalization material in Figures 5, 7 and 10; and Paragraphs 0022-0025 and 0034-0039.
Regarding claims 19 and 37 – Hinz recites a distance of about 10 microns between the microwells in Paragraph 0076.
Regarding claims 21, 22, 23, 27 and 61 – Hinz teaches a plurality of sensor terminals (microwell array 102) in Figure 1 and interconnecting the wells with channels having valves for controlled fluid flow in Paragraph 0074.
Regarding claims 24 and 25 – The Examiner submits a channel or well having a valve structure as taught by Hinz would meet the limitation of a bubble chamber configured to trap a bubble.
Regarding claim 26 – Hinz discloses a control instrument for operating the valves in Paragraph 0074.
Regarding claims 38 and 39 – Hinz recites nanoscale channel dimensions (0.1 microns) in Paragraph 0074.
Regarding claim 57 – Hinz teaches additional ports for the wells in Paragraph 0074.
Regarding claims 58 and 59 – Hinz recites aluminum oxide for the restriction structure and silicon oxide as the insulation layer in Figures 6A-6F and 8; and Paragraphs 0035-0036 and 0041.
Regarding claims 60 and 61 – Hinz teaches a field effect transistor having a functionalized well cavity in Figures 9A-9F and Paragraph 0042.
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.
Claim 56 is rejected under 35 U.S.C. 103 as being unpatentable over Hinz et al. (US 2014/0113303). Hinz does not recite a decreasing height for the fluid cavity. The Examiner takes the position that the difference between the prior art and the claimed device is a difference in shape and the claimed device would not perform the function of containing material to be sensed differently than the prior art device Hinz. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See MPEP 2144.04, Section IV, B – “Changes in Shape”.
Claims 2, 10, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Hinz et al. (US 2014/0113303) in view of Kuznetsov. Hinz teaches every element of claims 2, 10 and 12 except for a permeable membrane and hydrophobic surface. Kuznetsov teaches an ISFET device for sensing analytes. The portions of the device most relevant to the instant claims are shown in Figures 1-4 and described in Paragraphs 0050-0073. In Figures 3-4 and also Paragraphs 0012, 0016, 0032, 0053-0056, Kuznetsov teaches a porous hydrophobic membrane for protecting the sensor structure. The Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to combine the permeable membrane from Kuznetsov with the device of Hinz. One of ordinary skill in the art at the time would add the permeable membrane to Hinz to protect the sensor element as taught by Kuznetsov.
Claims 51-55 are rejected under 35 U.S.C. 103 as being unpatentable over Hinz et al. (US 2014/0113303) in view of Mannion et al. (US 2015/00668901). Hinz teaches every element of claims 51-55 except for a particle filter configured as a nanofluidic diode. Mannion teaches a nanofluidic sensing device The embodiments of the device most relevant to the instant claims are shown in Figures 1-4 and described in Paragraphs 0024-0041 and 0061-0062 as a field effect transistor sensor device. In Paragraphs 0060-0061, Mannion teaches a sensor channel that includes a plurality of nanofluidic diodes to divide the sensing area into multiple segments that attract and separate materials to be analyzed.
The Examiner submits it would have been obvious to one of ordinary skill in the art at the time of the effective date of the invention to combine the nanofluidic diodes from Mannion with the device of Hinz. One of ordinary skill in the art at the time would add the nanofluidic diodes to Hinz to separate particles for the sensor element as taught by Mannion.
Allowable Subject Matter
Claims 28-39 and 40-50 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.
Claim 28 recites the additional features of “wherein the fluid cavity includes a set of bubble chambers each having recessed internal surfaces configured to trap a bubble; wherein the integrated circuit further includes a heater circuit in the dielectric layer below each respective bubble chamber; and wherein the heater circuits and the set of bubble chambers provide a pump to transport the fluid in the fluid cavity by convection. The Examiner submits the additional combination of features is not taught or suggested by the cited prior art.
Claim 30 recites the additional features of “a first voltage terminal and a second voltage terminal on the sensing side, a first voltage source coupled to the first voltage terminal via the metallization structure, and a second voltage source coupled to the second voltage terminal via the metallization structure; and wherein each of the first and second voltage terminals include a respective metal surface at least partially covered by the insulation layer. The Examiner submits the additional combination of features is not taught or suggested by the cited prior art.
Claim 34 recites the additional features of “multiple sets of control terminals in the fluid cavity; and a set of AC voltage sources, each AC voltage source coupled to a respective control terminal within each set of the multiple sets of control terminals, wherein the set of AC voltage sources are configured to provide AC voltage signals having different phases. The Examiner submits the additional combination of features is not taught or suggested by the cited prior art.
Claim 40 recites the additional features of “the fluid cavity is a first fluid cavity, the sensor terminal is a first sensor terminal, the transistor is a first transistor, the channel region is a first channel region; and the restriction structure encapsulates a second fluid cavity and a connection structure coupled between the first and second fluid cavities on the sensing side; the second fluid cavity includes a buffer solution having a known pH; the semiconductor die further includes a second transistor having a second channel region; and the integrated circuit further comprises a second sensor terminal over the second channel region in the second fluid cavity. The Examiner submits the additional combination of features is not taught or suggested by the cited prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAYNE K HANDY whose telephone number is (571)272-1259. The examiner can normally be reached M-F 10AM-7PM.
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, Charles Capozzi can be reached at 571-270-3638. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DWAYNE K HANDY/Examiner, Art Unit 1798 July 11, 2026
/CHARLES CAPOZZI/Supervisory Patent Examiner, Art Unit 1798
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